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Whether you’re an established company or an aspiring entrepreneur, having one or more patents could be key to your success. Hi, I’m Michael Abramson and I’ll be informing you about some of the high-level basics of patent law.
What does having a patent pending actually mean? A patent pending simply means that a patent application has been filed, is still pending, and has not yet issued as a patent. You cannot enforce the rights of a pending patent, but in some situations, infringement damages can begin to accrue from the date the patent application is published.
What does having a patent actually mean? Having a patent is a negative right. It’s the right to exclude others from making, buying, selling, or using the patent invention. It does not provide you with the right to make, buy, sell, or use the patented invention. For example, if your invention is a combination of widget A and widget B and someone else has a patent for a widget A, you might not be able to make, buy, sell, or use your invention because it might infringe the patent for widget A.
Types of Patent Applications
1. Provisional Patent Application
One type of patent application is a provisional patent application. It’s really a placeholder to provide a priority date to the invention. It does not require any formal structure or claims. It lasts one year, but before the one-year period is up, a non-provisional patent application must be filed that claims benefit of the provisional filing date or you will lose that priority date.
2. Non-provisional Patent Application
The second type of patent application is a non-provisional patent application and is the new useful process, machine manufacture, or composition of matter or a new and useful improvement thereof. It generally last 20 years from the filing date.
3. Foreign Patent Application
For foreign patent applications you can file in the individual countries, but most people will file a PCT, or Patent Cooperation Treaty, patent application. Once that’s filed, it allows a placeholder to decide the countries in which they want to file and generally must be decided 30 months from the PCT filing date. The life of the resulting foreign patent may vary from country to country, but as a general rule it’s around 20 years from the filing date.
4. Design Patent Application
There’s also a design patent, which is the ornamental design of a functional item, for example, the beveled edges of an iPhone. That generally last 15 years from the filing date.
The patent process can be long and a little confusing, but filing a patent application does not mean that you have a patent. Once you have your idea, speak with a patent attorney who can help you decide whether or not to file a patent application and he’ll work with you to draft and file it. Once filed, and depending on how many applicants are ahead of you, the U.S. PTO may take one to three years before they exam the patent application to see if it should be issued as a patent.
Upon being examined, if the examiner cannot find any prior art references–known as prior art–that the examiner believes discloses or suggests your invention as claimed and predates your priority date, then the examiner will issue a notice of allowance, which entails paying an issue fee.
If the examiner can find prior art, the examiner will issue a rejection, called an office action, explaining the rationale behind the rejection. Receiving an office action is incredibly common and does not necessarily mean that the invention cannot be patented. However, it does require filing a legal response arguing the differences between the prior art and the claim invention, which may involve amending the claims to make that distinction more clear. The examiner will review the response and either again issue another officer action to which to respond if new references are found or issue notice of allowance if no new references are found.
It typically takes between two and five office action responses before patent applications typically get issued, but it’s important to recognize that not all patent applications get issued. After reviewing each office action, a patent attorney can help you determine whether or not to keep fighting.
Is It Worth Filing for a Patent Application?
Time and Cost
The costs can vary greatly based on many factors, but it’s estimated to cost, on average, $15,000 to $30,000 dollars and take three to five years to obtain a patent, if possible. The real question is, “Is this patent that I may or may not get worth more than the cost of obtaining it?” The obvious value could, of course, come from licensing or assigning the patent, but there are other benefits to consider.
First, keeping competitors out of the market. How much value is there in being the only game in town and dissuading others from entering your space? Next, restricting competitors. Even if you can’t practice your invention because it infringes on a competitor’s patent, you may still be able to prevent the competitor from practicing your invention, possibly putting them at a disadvantage in seeking a license.
There’s other types of protection as well. A company may be less willing to sue you for infringement if they know that you have a patent that they might have infringed and they may also help negotiate a cross license deal in lieu of a lawsuit. It could also prevent others from patenting the invention, which would prevent you from practicing it.
For the company value, it’s a little difficult to determine the actual value of the patent portfolio because it’s really an art and a science. But having a patent or even a pending patent can increase the company value. While not required, having some form of patent protection can help convince an investor to provide funding.
Hire a Patent Attorney
So noteworthy last thoughts. Do not try to file a patent application without a patent attorney. Patent application is more than merely a technical disclosure and should be written by somebody who has passed the federal patent bar and understands all the laws and procedures. The scope and validity of the patent may be affected by what you say, how you say it, what you don’t say, and once filed, the body of the patent application generally cannot be fixed. Only the claims can be amended and only based upon the original disclosure.
As a general rule, be aware that if you publicly disclose your offer or offer to sell your invention, then you may have one year from that date to file some sort of patent protection. Otherwise, you run the risk of being statutorily barred from obtaining a patent on the subject matter.
The information I’m providing is very generally applied and can easily be changed depending on your unique circumstances. Always speak with a patent attorney before making any decisions.
About Michael Abramson
At Holland & Knight LLP, my primary practice area focuses on patents (e.g., patent drafting, patent prosecution, IP strategy and portfolio management, Freedom to Operate opinions and other patent due diligence, start-up companies, as well as patent litigation support).
My area of expertise extends beyond assisting clients with obtaining patents in the technologies listed below. Clients extensively rely upon my advice concerning managing or building their overall patent portfolios. This requires considerable strategy, focusing on green space, patents by competitors in the space, the value of a defensive patent portfolio in dissuading a non-Troll entity from filing law suits and defense strategies to minimize the risk of being sued, the value in an offensive patent portfolio to dissuade competitors from entering the space, evaluating how increasing the size of the patent portfolio can increase the valuation of a company (e.g., during acquisition as an exit strategy or royalties from licensing), and conducting cost-benefit analyses to advise clients whether pursuing an invention is worthwhile, which requires an in-depth understanding of the client’s goals gained by knowing which questions to ask the client.
I have developed expertise in multiple cutting-edge technologies, such as, but not limited to:
– Smartphone Apps;
– Network Communications (e.g., cloud communications);
– Advanced Computer Network and File System Storage Architectures;- Computer Hardware and Software Technologies;
– Computer Hardware and Software Technologies;
– Electrical/Mechanical/Medical Devices;
– Power Supplies;
– Graphical Displays.
Bar Admissions: Massachusetts; United States Patent and Trademark Office (Patent Bar); United States Court of Appeals for the First Circuit; United States District Court of Massachusetts; United States Court of Appeals for the Federal Circuit.