The Patenting Process
I. Overview of types of protection of intellectual property; different
strokes for different folks.
A. Patentable "invention"
1. Utility patent for an "invention" ... that is novel, non-obvious and useful:
a. article of manufacture
b. machine or apparatus
c. composition of matter, including living organisms
d. process or method
e. improvement of any of the above.
2. Plant patent for distinct and new asexually reproduced plant variety.
3. Design patent for new, original and ornamental design for a
manufactured article.
4. Right to prevent others from making, using or offering patented invention
for sale in the United States.
5. Exclusionary right not an affirmative right to practice own patented
invention unless unrestricted by rights (such as a patent) held by another.
B. Trade secret protection for information that derives independent economic
value from not being generally known to other persons who can obtain economic
value from its use.
1. An alternative to patenting, protecting information only until secrecy lost
2. Some inventions are patentable without disclosing trade secret information.
C. Copyright for an "original work of authorship"...
Fixed in any tangible medium of expression that can be perceived or reproduced.
1. Exclusive right to:
a. reproduce and distribute copies in public;
b. prepare derivative works based on the original copyrighted work; and
c. publicly perform and display the original copyrighted work.
D. Trademark/service mark protection for indicator of origin, such as one or
more words, phrases, numbers, symbols, designs, colors, smells, sounds and
combinations thereof.
1. Right to prevent another from adopting or using a
similar mark likely to cause consumer confusion.
II. Utility Patents.
Federal law only (U.S. Constitution (Article I., ? 8, clause 8) and 35 U.S.C.
?? 101 et seq.).
Possible avenues for patent protection:
1. United States Patent & Trademark Office, Department of Commerce.
2. Foreign: direct filing in the patent office of a foreign country.
3. International:
A. Patent Cooperation Treaty:
File a single international preliminary search report, then request the
patent offices of designated PCT member countries to examine the application
and grant a patent under the applicable foreign law.
B. European Patent Convention:
File a single international application, which is examined in accordance
with common European standards en route to the granting of a separate patent
in each European country that is a member of European Patent Convention.
C. Defining the invention; possible stages of "invention":
1. Conception: formation of a definite idea.
2. Research and development: diligence may be important if first to
conceive of an invention, but not first to reduce the idea of practice.
3. Reduction to practice: actual embodiment or practicing of the invention;
the filing of a patent application is considered constructive reduction to
practice since applications must describe an enabled, operative invention.
D. Inventorship, co-inventors, and ownership of patent rights:
1. An inventor includes any natural person who conceives an operative
invention; not mere implementation of another's ideas.
2. Co-inventor status achieved via communication (collaboration) leading
to contribution ultimately embodied in the invention.
a. Patent applications must identify all inventors, and be supported by
an oath signed by all inventors.
b. Each co-inventor generally has equal rights to practice the patented
invention, absent agreement to the contrary.
3. Inventors are generally presumed to own the patent rights to an
invention, unless:
a. Ownership transferred to another by:
(1) written or verbal contract assigning patent rights to the other; or
(2) inventor/employee hired by the other specifically to exercise his/her
inventive faculties resulting in the invention.
b. "Shop rights" give employer a non-exclusive, royalty-free,
non-transferable license to use the patented technology.
c. "March in" rights of the federal government, for inventions resulting
from research sponsored by federal funds.
4. A patent essentially evidences the creation of "property" and the
boundaries of the corresponding legal rights; like all other property owners,
patent owners may use, sell, lease or encumber the subject property.
E. Patentability Requirements in the United States:
1. Novelty: the discovery is not anticipated by any Single prior art
reference which discloses every element of the discovery.
2. Non-obviousness: comparing the prior art to the discovery as a whole,
the discovery would not have been obvious to someone of ordinary skill in the
field.
3. Enabled best mode: the patent application must specifically disclose
how to make or use an operable version of the invention, including the best
mode then known to the inventor.
4. Claims: statement of precisely what the inventor regards as the invention.
a. Independent claim expressly states all elements of the invention, and
all limitations.
b. Dependent claim: incorporates all limitations of other claim(s), then
includes further elements and limitations.
F. Bars preventing U.S. patenting of patentable inventions:
1. Critical dates:
a. date of invention;
b. filing date of U.S. application; and
c. first public knowledge, use, offer for sale in the U.S., or
publication or patenting anywhere.
2. Pre-invention conduct... before the applicant's invention, another:
a. has public use or knowledge of the invention in the U.S.;
b. obtains a patent on, or publishes a paper disclosing, the invention
anywhere in the world.
c. files a U.S. patent application disclosing the invention, which is
later granted a patent; or
d. makes the invention in the U.S.
3. Pre-application conduct... more than 1 year before the filing date of
the U.S. application, anyone (including the applicant):
a. publicly uses or offers the invention for sale in the U.S.;
b. obtains a patent on, or publishes a paper disclosing, the invention
anywhere in the world; or
c. files a foreign patent application, which is granted before the
filing of the application in the U.S.
G. Duration:
The term of a patent expires 20 years after the filing date of the
application; possible extension of patent term for regulatory delay.
H. Fees for filing an application, obtaining a patent and maintaining your
patent rights:
1. $790 basic filing fee required by the Patent Office; for an application
having a maximum of 20 claims, no more than 3 of which may be independent
claims; additional claims acceptable upon the payment of an additional fee.
2. $1,320 issuance fee for utility patent, due at the Patent Office within
3 months from the date of the Notice of Allowance; this deadline is
non-extendible.
3. Maintenance fees due for utility patents:
a. $1,050 due 3 years and 6 months after the original grant date.
b. $2,100 due 7 years and 6 months after the original grant date; and
c. $3,160 due 11 years and 6 months after the original grant.
d. Each of these 3 deadlines may be extended by 6 months, but only with
the payment of a surcharge.
4. $150 provisional application filing fee.
a. Provisional application must contain only the name of each inventor
and a detailed description of the invention (including any drawing necessary
to an understanding of the invention), not any claim(s).
b. To avoid abandonment, a regular patent application must be filed before
the first anniversary of the provisional application filing date, and that
regular application must be based upon the same detailed description of the
invention provided in the provisional application.
5. The above fees are essentially halved for applicants qualifying for
small entity status (essentially an independent inventor or a business
employing less than 500 persons, without any obligation to transfer the
invention to anyone disqualified from claiming small entity status).
I. Optional notices:
1. "Patenting pending" is appropriate after a provisional or regular
patent application has received a serial number and a filing date from the
Patent Office; although such marking is intended to notify third parties of
imminent patent rights, such third parties may still engage in business with
the patent-pending product or technology until a patent is actually issued.
2. Mark the product with the patent number once obtained; failure to mark
does not invalidate the patent, but no damages recoverable from infringer
until after infringement with notice of registration.
J. Selling patents or leasing out patent rights:
1. Sale by assignment; transfer of legal title, with all corresponding
rights such as power to re-assign, license, encumber or sure for infringement.
2. Lease-out by licensing, either exclusively or non-exclusively; mere
transfer of specified rights and duties, usually only to make or sell, without
transferring legal ownership.
3. Recordation at USPTO: any conveyance of an interest in a patent or
application is void as against any subsequent purchaser or mortgagee without
notice of such prior conveyance, unless the conveyance document is recorded
in the Patent Office within 3 months from its date or prior to the date of
the subsequent purchase or mortgage.
K. Infringement:
1. Unauthorized person makes (or imports), uses, offers for sale or sells
the patented product or technology.
2. Lawsuit in federal court for infringement, and seeking remedies such as:
a. Injunction against further infringement
b. Damages for continued misconduct after notice of atenting and claimed
and infringement, measured by:
(i)the amount of an established royalty for a license of the patent rights;
(ii)the amount of a reasonable royalty, if no actual license has taken
place;
(iii)the patent owner's lost profits caused by the infringer's misconduct;
(iv)treble damages if infringement is willful or in bad faith and
(v)interest.
c. Attorneys fees in exceptional cases such as willful infringement.
III. Trade Secret Protection.
A. Sources of protection:
1. State law:
a. Arkansas Trade Secrets Act enacted in 1981 to combat "uncertainty
with regard to a substantial number of patents and because of the commercial
importance of trade secrets law to industry in the State of Arkansas."
(Discussed more below.)
b. The Arkansas Rules of Civil Procedure also provide for protective
orders prohibiting the disclosure of trade secrets or other confidential
commercial information during litigation. Ark. R. Civ. P. 26(c)(7).
2. Federal law:
a. Economic Espionage Act of 1996 provides both civil and criminal
remedies for intentional misappropriation of trade secrets.
b. The Federal Rules of Civil Procedure also provide for protective
orders prohibiting the disclosure of trade secrets or other confidential
commercial information during litigation. Fed. R. Civ.P. 26(c)(7).
c. The Court of International Trade has similar powers. 28 U.S.C. 2641 (b).
3. Common law: the Arkansas Trade Secrets Act displaces "conflicting tort,
restitutionary, and other law of this state pertaining to civil liability for
misappropriation of a trade secret."" However, the Act does not supercede the
contractual or other civil liability for relief that is not based upon
misappropriation of a trade secret, nor does it displace criminal liability
for misappropriation of a trade secret.
B. Statutory definition of "trade secret" under the Arkansas Trade Secrets Act:
1. Information that derives independent economic value from not being
generally known to other persons who can obtain economic value from its use.
(Ark. Code Ann. Section 4-75-601 (4).)
2. "Trade secret" also includes information that has only potential
economic value, and that is not readily ascertainable by proper means by
someone who can obtain economic value from its disclosure. (Id.)
C. Reasonable efforts to maintain secrecy, include:
1. Confidentiality agreements with employees.
2. Confidential disclosure agreements with outsiders.
3. Restricted access to information, documentation, facilities, products
or prototypes appropriate policies and implementation.
4. Filing suit; claim it or lose it.
D. Potentially infinite duration of protection, so long as secrecy is maintained.
E. Law violated by acquisition of trade secret by improper means, or by
unauthorized disclosure or use of such information by someone having reason to
know of improper acquisition.
F. Statutory authority for injunction preventing disclosure of secret information.
About the Author:
Calhoun, Joe D., Registered Patent Attorney
After earning a B.S. in both Biology and Psychology from Tulane University,
Mr. Calhoun cobtained his J.D. degree from the University of San Francisco School
of Law in 1983. Primarily engaged in business law and litigation, Mr. Calhoun
has developed an emphasis on intellectual property matters by advising clients
concerning patent, trade secret, copyright and trademark law. As a registered
patent attorney, Mr. Calhoun assists clients in obtaining patent protection for
technology; he also has a wide array of experience in the licensing and
enforcement of patent rights, as well as the procurement and protection
of marketing rights and other aspects of intellectual property law.
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