Patent It Yourself

Your Step-by-Step Guide to Filing at the U.S. Patent Office

David Pressman, David E. Blau

• Publisher: NOLO
• Year: 2020
• Print ISBN: 9781413327809
• eBook ISBN: 9781413327823
• Edition: 20
• Topic: Law
• Subtopic: Small Business
• Index: Law

Protect and profit from your invention

For 35 years, Patent It Yourself has guided hundreds of thousands of inventors through the process of getting a patent, from start to finish. Patent attorneys David Pressman and David E. Blau provide the latest information, forms, and clear instructions to help you:

• conduct a patent search the right way
• evaluate your idea's commercial potential
• file a provisional patent application to get "patent pending" status
• prepare a patent application
• focus on your patent application's claims
• respond to patent examiners
• get your drawings done right
• protect your rights in foreign countries
• deal with infringers, and
• market and license your invention.

The 20th edition covers the latest patent filing rule changes, including the most recent implications of the America Invents Act first-to-file rules.

With downloadable forms: All essential forms, including a Nondisclosure Agreement, Patent Searcher's Worksheet, and Design Patent Application are included in the book and are available for download (details inside).

CHAPTER

1

Introduction to Patents and Other Intellectual Property

A. Intellectual Property—The Big Picture

B. How Intellectual Property Law Provides “Offensive Rights” (and Not Protection) to Inventors

C. Alternative and Supplementary Offensive Rights

D. Patents

1.What Is a Patent and Who Can Apply for It?

2.Patents Are Like Property

3.What Can Be Patented—The Three Types of Patents

4.What Can’t Be Patented

5.The Novelty and Nonobviousness Requirements

6.Patent Filing Deadlines

7.Patent Fees

8.How Long Do Patent
Rights Last?

9.How Patent Rights Can Be Lost

10. What Rights a Patent Grants, and the Prior-Art Reference Value of a Patent

11. Some Common Patent Misconceptions

E. Trademarks

1.Trademarks Defined

2.Monopoly Rights of a Trademark Owner

3.Relationship of Trademark Law to Patent Law

4.Overview of How Offensive Rights to Trademarks Are Acquired

5.What Doesn’t Qualify as a Trademark (for the Purpose of Developing Offensive Rights)

F. Copyright

1.What Is Copyright?

2.Copyright Compared With Utility Patent

3.Areas Where Patent and Copyright Law Overlap

4.Areas Where Trademark and Copyright Law Overlap

5.When and How to Obtain Copyright Coverage

G. Trade Secrets

1.Definition

2.Relationship of Patents to Trade Secrets

3.Advantages of Trade Secret Protection

4.Disadvantages of Trade Secret Versus Patenting

5.Acquiring and Maintaining Trade Secret Rights

H. Unfair Competition

1.When Unfair Competition Principles Create Offensive Rights

2.How Does the Law of Unfair Competition Affect You?

3.Comparison of Unfair Competition With Design Patents

I.Acquisition of Offensive Rights in Intellectual Property—Summary Chart

J.Summary of Legal Remedies for Misappropriation of Various Types of Intellectual Property

K.Invention Exploitation Flowchart

L.Summary

Inventor’s Commandment 1

Prior to deciding how to proceed with any creation, you should learn and be familiar with the various forms of intellectual property, including utility patents, design patents, trademarks, copyright, and trade secrets, as well as unfair competition law, so that you will be able to select and employ the proper form(s) of coverage for your creation.

In this chapter we’ll introduce you to the world of “intellectual property” (IP) law, including not only patents, but trademarks, copyright, trade secrets, and so on. Although you may think that a patent is the only form of protection available for your creation, there are many other forms of IP that may be available to help you. We strongly recommend that you become familiar with and consider all forms of IP, since you may find that you can use one or more of the other forms of IP in addition to or instead of a patent.

This chapter presents an overview of the different types of IP, including patents. Of course, we’ll honor the title of this book in later chapters, which focus on how to obtain and profit from a patent.

Before we start, to show the importance of patents to a society, consider what Mark Twain said about patents way back in 1889:

“That reminds me to remark, in passing, that the very first official thing I did, in my administration—and it was on the very first day of it, too—was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backways.”

—A Connecticut Yankee in King Arthur’s Court, Chapter IX, “The Tournament.”

Have you ever thought about why the standard of living in the United States is so high? We believe it’s due in part to the United States patent system, which stimulates creativity and industry in the U.S. As Abraham Lincoln said, “The patent system added the fuel of interest to the fire of genius.”

Now, let’s begin!

A. Intellectual Property—The Big Picture

“Intellectual property” (sometimes called “intangible property”) refers to any product of the human mind or intellect, such as an idea, invention, expression, unique name, business method, industrial process, or chemical formula, which has some value in the marketplace, and can ultimately be reduced to a tangible form, such as a computer, a chemical, a software-based invention, a gadget, a process, etc. Intellectual property law, in turn, covers the various legal principles that determine:

• who owns any given intellectual property

• when such owners can exclude others from commercially exploiting the property, and

• the degree of recognition that the courts are willing to give to such property (that is, whether they will enforce the owner’s rights).

In short, intellectual property (IP) law determines when and how a person can capitalize on a creation. In recent years the role of IP has expanded greatly, and it will continue to do so as our society becomes more dependent upon technology and information.

Over the years, intellectual property law has fallen into several distinct subcategories, according to the type of “property” involved:

• Patent Law provides rights with regard to technological inventions. As we’ll see later in this chapter, there are three types of patents: utility, design, and plant. Each cover different kinds of inventions.

• Trademark Law provides rights related to certain symbols (for example, a word, design, or sound) used to identify a brand of goods or services. Examples of trademarks are Ivory, Coke, Nolo, the Mercedes-Benz star, and the NBC chimes. With regard to advertising slogans, while the courts generally do not regard them as trademarks, they will give them trademark rights as long as their owners have used them consistently as brand names, and not just in the media. Slogans are primarily covered by copyright law and unfair competition (see below).

• Copyright Law provides rights related to expressive works, such as books, songs, and movies. It grants authors, composers, programmers, artists, and others the right to prevent others from copying or using their original expression without permission, and to recover damages from those who do so. Copyright law gives me offensive rights against anyone who copies this book without my permission.

• Trade Secret Law covers rights with regard to private knowledge that gives the owner a competitive business advantage—for example, manufacturing processes, magic techniques, and formulae. Methods of producing laser light shows and fireworks are trade secrets. Unless its owner makes substantial efforts to keep the knowledge secret, any trade secret rights will be lost.

• Unfair Competition Law gives rights to owners of nonfunctional mental creations that don’t fall within the rights offered by the four types of law just discussed, but that have nevertheless been unfairly copied by competitors. For example, “trade dress” (such as Kodak’s yellow film package), a business name (such as Procter & Gamble Co.), a unique advertising slogan (for example, “Roaches check in but they don’t check out”), or a distinctive packaging label (such as Duracell’s copper-top energy cells) may all enjoy rights under unfair competition principles.

Outside of extremely specialized areas, such as semiconductor mask works (17 USC 901 to 914) and passenger vessel hull and deck designs (17 USC 1301 to 1332), all intellectual property falls into one of the above broad types. All of these forms of intellectual property law are shown and briefly depicted in Fig. 1A—The Intellectual Property Mandala, below.

Fig. 1A—The Intellectual Property Mandala

At one point, patents were the most significant part of IP law, so most attorneys who handled trademarks, copyright, trade secrets, and unfair competition, as well as patents, called themselves “patent attorneys.” Nowadays, the non-patent forms of IP law have become far more significant, so most patent attorneys now call themselves IP attorneys. This term has led to some confusion, because many attorneys who aren’t licensed to practice patent law (they only do trademark, copyright, etc.) also call themselves IP attorneys. To practice patent law before the United States Patent and Trademark Office (PTO), one must pass a separate “agent’s exam” given by the PTO that covers patent laws, rules, and agency operation. So if you need someone to represent you before the PTO and you encounter an attorney who is merely identified as an “IP attorney,” it’s a good idea to ask the attorney (or check the PTO’s site) to see if they’re licensed to practice before the PTO.

Many clients have come to us with an invention or idea, asking if there was some easier and quicker way to protect their invention than the seven methods shown in the IP mandala, above. Alas, we always have to disappoint them. We have included in this chapter all of the IP techniques that exist. There are no additional or secret weapons in the IP arsenal, so you’ll have to work with what we have.

B. How Intellectual Property Law Provides “Offensive Rights” (and Not Protection) to Inventors

Many people speak of a patent as a form of “protection.” The fact is that an intellectual property right is an offensive weapon (an attacking sword), rather than “protection” (a defensive shield). To properly benefit from a patent, as we’ll see in Chapter 15, the patent owner must sue or threaten to sue anyone who trespasses on the right, and the same holds true for the other forms of IP. The patent doesn’t provide any “protection” in its own right, and does not give its owner a defense if he or she infringes someone else’s patent. Although the word “protection” is in common usage for all types of intellectual property, it’s more accurate to say that a patent—as well as a copyright, trade secret, and trademark—gives its owner “offensive rights” against infringers. In other words the patent, copyright, trade secret, or trademark provides a tool with which you can enforce a monopoly on your creation.

The distinction between protection (a defense) and offensive rights is as important in intellectual property law as it is in football or basketball: while a good defense may be valuable, you’ll need a powerful offense to win the game or stop the infringer. To help you keep this distinction in mind, we try consistently to use the term “offensive rights” instead of “protection.” However, if we slip up from time to time, please remember that by protection we only mean that inventors have the right to affirmatively come forward and invoke the court’s help in preventing infringement by others.

Important Definitions

While these definitions may seem elementary, we provide them here because many inventors confuse these terms, and so that you will know exactly what we mean when we use these terms later.

Also, in the patent world, a single word or comma can make the difference between allowance or rejection of a set of claims, or whether a court will hold that a device infringes a patent. All patent practitioners consider it important and usually essential to use words and punctuation precisely and accurately.

An invention is any new and useful process, machine, manufacture, or material composition, or an improvement to one of these, developed by a human.

A patent application is a set of papers that descri...

Table of contents

• Cover
• Title
• Copyright
• Acknowledgments
• About the Authors
• Table of Contents
• Your Legal Companion
• 1 Introduction to Patents and Other Intellectual Property
• 2 The Science and Magic of Inventing
• 3 Documentation and the PPA
• 4 Will Your Invention Sell?
• 5 Is It Patentable?
• 6 Search and You May Find
• 7 What Should I Do Next?
• 8 How to Draft the Specification and Initial Drawings
• 9 Now for the Legalese—The Claims
• 10 Finaling and Filing Your Application
• 11 How to Market Your Invention
• 12 Going Abroad
• 13 Getting the PTO to Deliver
• 14 Your Application Can Have Children
• 15 After Your Patent Issues: Use, Maintenance, and Infringement
• 16 Ownership, Assignment, and Licensing of Inventions
• Appendixes
• Index