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PATENT IT YOURSELFby Patent AttorneyDavid PressmanIntroduction to Patentsand Other IntellectualPropertyWhat is a Patent?zzzIt’s a right granted by the government to an inventorIt gives its owner the right to exclude others from making,using, or selling the invention “claimed” in the patent deedfor approximately 17 to 18 years.It is a form of personal property and can be sold outrightfor a lump sum, or its owner can give anyone permissionto use the invention covered (license it) in return forroyalty payments.1

The 3 Types of Patentsz UTILITY¾¾¾PATENTCovers inventions that function in a unique manner toproduce a utilitarian result.New drugs, electronic circuits, software, semiconductormanufacturing process, new bacteria, newly discoveredgenes, new animals, and virtually anything under thesun that can be made by humans.Patent application must consist of detailed descriptiontelling how to make and use the invention, together withclaims that define the invention, drawings of theinvention, formal paperwork, etc.The 3 Types of Patentsz Design¾¾¾PatentCovers the unique, ornamental, or visible shape or design ofa non-natural object.The uniqueness of the shape must be purely ornamental oraesthetic; if it is functional, then only a utility patent isproper. A useful way to distinguish between a design and autility invention is to ask, “Will removing or smoothing outthe novel features substantially impair the function of thedevice?”The design patent application must consist primarily ofdrawings.2

The 3 Types of Patentsz PLANT¾PATENTCovers asexually reproducible plants (through the use ofgraft and cutting), such as flowers.How Long Do Patent Rights Last?zzzUtility and Plant Patents expire 20 years fromthe date of filing.Every patent is guaranteed an in-force periodof at least 17 years.From the date of filing to issuance (termed“pendency period”) the inventor has no rights.3

The Life of an Invention1.2.3.4.5.Invention conceived but Not YetDocumentedInvention Documented but PatentApplication Not Yet Filed.Patent Pending-Patent Application Filed butNot Yet IssuedIn-Force Patent-Patent Issued but Hasn’tYet ExpiredPatent ExpiredPatent FeesAssuming that patent attorneys or agents, andnot including costs of drawings, typing,photocopying, and postage, the only fees onewould have to pay are government fees.The amounts of these fees are listed on the PTOFee Schedule in Appendix 4.The large-entity fees are generally paid bycorporations, while the small-entity fees are paidby independent inventors.4

Patent FeesUtility Patent Application Filing Fee 750/375 Utility Application Issue Fee 1,300/650 Maintenance Fee 1 (3 years) 890/445 Maintenance Fee 2 (7 years) 2,050/1,025 Maintenance Fee 3 (11 years) 3,150/1,575 Patent Fees Design Patent Application Filing Fee 330/165Design Application Issue Fee 470/235No Maintenance Fees for Design PatentsPlant Patent Application Filing Fee 520/260Plant Application Issue Fee 630/315No Maintenance Fees for Plant Patents5

How Patent Rights Can Be LostzzzzzMaintenance fees aren’t paidProved that the patent fails adequately to teach howto make and use the invention, or improperlydescribes the inventionOne or more earlier patents or publications areuncovered which show that the invention of thepatent wasn’t new or wasn’t different enough.Patent owner engages in certain types of illegalconduct.The patent applicant committed fraud on the Patentand Trademark Office by failing to disclose materialinformation.What Cannot Be PatentedzzYou can’t patent any process that can beperformed mentally.Same applies to abstract ideas, inventionsthat aren’t reducible to hardware form, orinventions that don’t involve the manipulationof hardware or symbols to produce a usefulresult.6

Intellectual Propertythe BIG pictureIntellectual Property refers to any product of thehuman mind or intellect, such as an idea,invention, expression, unique name, businessmethod, industrial process, or chemical formulawhich has some value in the marketplace andthat ultimately can be reduced to a tangible form,such as a computer, a chemical, a softwarebased invention, a gadget, a process, etc.Intellectual Propertythe BIG picture¾¾¾Intellectual property law has fallen into several distinctcategories, according to the type of property involved:PATENT LAW deals with the protection of the mental conceptsor creations known as inventions (utility, design, and plant).TRADEMARK LAW deals with the degree to which the ownerof a symbol used in marketing goods or services will beafforded a monopoly over the use of the symbol (Coke).COPYRIGHT LAW grants authors, composers, programmers,artists, and the like the right to prevent others from copying orusing their original expression without permission and torecover damages from those who do.7

Intellectual Propertythe BIG picture¾¾TRADE SECRET LAW deals with the acquisition of offensiverights on private knowledge that gives the owner a competitivebusiness advantage (Coca Cola recipe).UNFAIR COMPETITION LAW affords offensive rights toowners of non-functional mental creations that do not fall withinthe rights offered by the four types of law just discussed(Kodak’s yellow film package, Duracell’s copper-top).TRADEMARKSTMzzA trademark is any word or other symbol that isconsistently attached to, or forms part of, a productto identify and distinguish it from others in themarketplace.A clever trademark can be used with an invention toprovide it with a unique aspect in the marketplaceso that purchasers will tend to buy the trademarkedproduct over a generic one.8

TRADEMARKSTMHow Offensive Rights to Trademarks are Acquireda.b.c.d.e.f.Preserve Your Mark as a Trade Secret Until You Use it.Make Sure the Mark Isn’t Generic or Descriptive.Make Sure Your Mark Isn’t Already in Use.Use or Apply to Register Your Trademark.Use and Register Your Trademark.Use Your Trademark Properly.COPYRIGHT zA copyright is another offensive right given bylaw, this time to an author, artist, composer, orprogrammer, to exclude others from publishingor copying literary, dramatic, musical, artistic, orsoftware works.9

COPYRIGHT Areas where Patent and Copyright Law Overlap:Computer Software – Why patent software opposedto simply registering a copyright on it? 20 years of offensive rights, but2 years and to obtain a patentCopyright compared to Design Patents – if the workis purely artistic, a design patent is improper Design where the shape is inseparable from the objectTrade SecretsIt is any information, design, device, process,composition, technique or formula that is not knowngenerally and that affords its owner a competitivebusiness advantage.Items considered as Trade Secrets:-Chemical Formulas ( paper)-Chemical Recipes(formulas & process)-“Magic-type” Trade Secrets-Manufacturing Process-Business-information Type Trade Secrets10

Relationship of Patents toTrade SecretszzzzIf your invention is maintained as a trade secret andyou put it into commercial use, you must file a patentapplication within one year of the date the inventionwas used commercially.For the first 18 months of the application period, it ispossible to apply for a patent and still maintain theunderlying information as a trade secret.If you don’t file a Nonpublication Request (NPR), yourapplication will be printed verbatim after 18 months andall of your secret “know-how” becomes public.If your patent is refused, the competition will still notknow about your invention and any competitiveadvantage.Advantages ofTrade Secrets Protection¾¾¾¾¾¾The possibility of perpetual protection; beyond thepatent’s 20 years, trade secrets will last indefinitely ifnot discovered.Can be maintained without the cost or effort involvedin patenting.No need to disclose details of your invention to thepublic for Trade Secret Rights.No one can look at your Trade Secret and try todesign around it.Can be established without naming any inventors.Obtained immediately, whereas patents takes acouple of years to obtain.11

Disadvantages ofTrade Secrets Protection¾¾¾They can’t be maintained when the public is able todiscover the information by inspecting, dissecting,or analyzing the product (reverse engineering).Strict precautions must always be taken andcontinually enforced to maintain the confidentialityof the trade secret.More difficult to sue on and enforce on than apatent; trade secrets must be proven to exist to thecourt before the suit may proceed.UNFAIR COMPETITIONzzzThe area of ‘unfair competition’ is the mostdifficult to explain.Can be used to cover such items asadvertising symbols, methods of packaging,slogans, business names, trade dress.When the characteristics of a product orservice aren’t distinctive or defined enough tobe considered a trademark.12

If your Creation Relates to:The functional aspect of any machine, articlecomposition, or process or new use of any of theforegoing-such as circuits, algorithms that affectsome process or hardware, gadgets, businessmethods, apparatus, machinery, tools, devices,implements, chemical compositions, and industrialor other processes or techniques that one coulddiscover from final product, toys, game apparatus,semiconductor devices, scientific apparatus,abrasives, hardware, plumbing, parts, alloys,laminates, protective coatings, drugs, sportinggoods, kitchen implements, locks and safes,timekeeping apparatus, cleaning implements, filtersrefrigeration apparatus, environmental controlapparatus, medical apparatus, new non-humananimals, new bacteria, plant (sexually or asexuallyreproducible), or anything else made by humanswhere the novel aspects have a functional purpose.If your Creation Relates to:Any new design for any tangible thing where thedesign is nonfunctional and is part of and notremovable from the thing, such as a bottle, acomputer case, jewelry, a type of material weave, atire tread design, a building or other structure, anyarticle, item of apparel, furniture, tool, computerscreen icon, etc.Any asexually reproduced plant.Acquire OffensiveRights By:UTILITY PATENTAcquire OffensiveRights By:Design PatentPlant Patent13

If your Creation Relates to:Acquire OffensiveRights By:Any symbol, sign, word, sound, design, device,shape, smell, mark, etc., used as a brand name(trademark), service mark, certification mark, orcollective mark, such as “AjaxTM tools.” (Thesymbol cannot be generic or descriptive – e.g.“electric fork.”)Using it as a trademark with“TM” or “SM” superscript andthen registering it in stateand/or federal trademarkoffices.Any book, poem, speech, recording, computerprogram, work of art (statue, painting, cartoon,label), musical work, dramatic work, pantomime andchoreographic work, photograph, graphic work,motion picture, videotape, map, architecturaldrawing, artistic jewelry, gameboard, gameboardbox and game instructions, etc.Placing a correct copyrightnotice on the work, e.g., “ 1991 M. Smith”; apply forcopyright registration,preferably within threemonths of publication.If your Creation Relates to:Acquire OffensiveRights By:Any information whatever that isn’t generally knownthat will give a business advantage or iscommercially useful, such as formulae, ideas,techniques, know-how, designs, materials,processes, etc.Identifying it as proprietaryinformation or a trade secret,or put it on an inventiondisclosure-type form andlimit its dissemination usingappropriate means.Any distinctive design, slogan, title, shape, color,trade dress, package, business layout, etc.Using it publicly as much aspossible, in advertising, etc.,so as to establish a“secondary meaning” toenable you to win an unfaircompetition lawsuit.14

The Science and Magic ofInventing and DocumentationWhat can small inventor do?FACT:73% of all inventions that have startednew industries have come fromindividual inventors.z “Everything that can be invented hasbeen invented” (U.S. Patent OfficeDirector urging President to abolishthe Office in 1899)z15