International Patents and Trademarks

Foreign Patents

A patent is the government grant of the right to prevent others from making, using, and selling an invention for a specified time (20 years from filing). Patents are examined based on a number of criteria. Domestic patents are granted by the U.S. Patent and Trademark Office, called the USPTO, and must be new, useful and non-obvious. Foreign patent offices, typically within each country, grant patents based on similar criteria as that of the U.S., being new, useful, and have inventive step. Domestic, foreign, and international patent application processes are complicated legally and procedurally, so it is wise to consult with an experienced patent attorney as early as possible in the evolution of the invention in question.

A patent application may initially be filed in one of three ways:

  1. directly here in the U.S. as a domestic U.S. patent application;
  2. directly within a foreign country as a foreign patent application; or
  3. at a qualified international receiving office as an International patent application.

The Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) gives an inventor the ability to file an international patent application and reserve coverage in almost 150 different countries simultaneously.

The PCT is an international procedure established by an international agreement to which the U.S. is a signatory. The PCT is administered by a United Nations agency, the World Intellectual Property Organization (WIPO), which is headquartered in Geneva, Switzerland.

WIPO has established an intricate, well organized system for the filing and administration of international patent applications. In the U.S., PCT applications can be filed with the USPTO, a PCT receiving office.

An international patent application has a number of benefits. First, it acts to grant an inventor additional time (around 30 months) to decide which particular countries to enter. The extra time is useful where the product is in an initial stages of development and marketing and further time is needed to establish the key market areas.

Secondly, the international application will be given an examination (international search report and written opinion) that can be used to further define and amend the application prior to entering individual countries. These international findings help the applicant to evaluate the strength of the patent application and are used to make necessary amendments. All international searches and reports are available to each of the national patent offices designated by the applicant for help later when deciding whether to grant the invention a national patent.

Third, cost savings may be realized if more than 3 or 4 national stage applications (direct filing in a particular country) will be filed. Although the initial filing fees for the international application are higher than the U.S., consolidated examination and amendments within the PCT often lead to cost savings when entering each foreign country via a national stage application.

It is important to determine early on in the patenting process whether you as a business or entrepreneur desires to expand patent protection to the international markets. The globalization of markets and intricate networking of economies necessitate its consideration. Patents are geographical in nature and each inventor should consider applying for a patent here in the U.S. and also in foreign countries.

International Trademark Law

Foreign applicants who want to pursue a U.S. trademark application or maintain a U.S. trademark registration now must comply with a new rule. The rule stipulates that foreign-domiciled applicants and registrants work with the U.S. Patent and Trademark Office via a U.S.-licensed attorney.

This means that all individuals or business entities that want to file a new U.S. trademark application or maintain an existing U.S. trademark registration must work with a U.S.-licensed attorney. Applicable to all foreign-domiciled applicants, the rule even pertains to Canadian trademark attorneys and agents who used to be empowered to practice before the USPTO.

The rule went into effect on August 3, 2019. It is aimed at reducing the number of compliance problems with U.S. trademark laws and regulations before the USPTO. Officials say that the rule also will improve the accuracy of all submissions sent to the USPTO while protecting the U.S. trademark register’s integrity.

Requiring local legal representation to file trademark applications and other documents is common in other nations. USPTO officials believe that not making a similar requirement in the U.S. led to abuse of the registration system. This abuse took the form of inaccurate and in some cases fraudulent filings that were not in compliance with the law or the USPTO’s regulations. Some of the questionable applications and filings appeared to have been handled by foreign parties who were not authorized to practice before the USPTO.

The new law is designed to ensure that foreign applicants and registrants receive proper representation before the USPTO. Moreover, it is believed that requiring a U.S.-licensed attorney to collaborate on filings for foreign applicants will result in less fraud, fewer mistakes and enhanced compliance with the rules of the USPTO.

Anyone considering how to protect an invention or trademark nationally and internationally should seek the advice and assistance of an experienced patent lawyer. Seek qualified, knowledgeable legal patent counsel.

Patent It Yourself

Patent Steps

Obtaining patent protection for your invention is complicated. With an understanding of the steps involved in pursuing a patent, inventors will have a better grasp of how convoluted it is. An intellectual property lawyer’s familiarity with this intricate procedure helps entrepreneurs to receive the suitably broad protection that their invention deserves.

Use this overview to familiarize yourself with the patent application system, then reach out to a qualified attorney for money- and time-saving guidance.

Understand Your Invention

The better you know your invention, the better your chances are of pursuing patent protection. It’s critical to identify the aspects that make your invention novel. Whether your invention has one novel aspect or is groundbreaking from top to bottom, you’ll want to know each of these aspects intimately so that they can be described and claimed in your patent application.

Scope is another crucial consideration. Examine whether or not there are other methods of building your invention. Brainstorm all of the possible methods of making your invention even if they’re not as effective as your preferred method.

Further, take some time to consider whether or not your invention could have a broader application. If the invention could be used for a purpose beyond the intended one, would it need to be modified?

Spending time on each of these aspects helps you to understand your invention, which means that you may be able to claim broader protection.

Research Your Invention

The USPTO won’t grant a patent unless some aspect of your invention is new and novel. Accordingly, it’s sensible to be aware of the technology that came before. This means conducting an electronic search through the records of the USPTO for any issued patents or published applications that may be similar. You also may want to use a search engine to find any white papers, brochures or presentations that may disclose similar technology.

This helps you decide whether or not your invention is novel enough to receive a patent. However, patent searching is difficult. Whether or not a reference will interfere with your ability to obtain patent protection may turn on an obscure factor. It’s always sensible to ask a patent attorney to conduct a patent search and provide their legal opinion with regard to whether or not it’s reasonable to pursue a patent.

Choose the Type of Protection

By now, you’ve spent time thinking about and researching your invention. If you believe more tinkering is warranted, then you may want to file a provisional patent application. Such an application affords you an earlier filing date, effectively putting on record with the USPTO that you were the inventor of this item on this date. Then, you have one year within which to file your real patent application.

Your provisional patent application will never be examined, and it won’t become a patent unless you follow it up with a non-provisional patent application. This is the filing that the USPTO will review in detail.

Draft Your Patent Application

This is one of the most complex parts of the process. Get it wrong, and you risk being unable to obtain any kind of patent protection or detrimentally limiting the scope of any protection that you do get.

If you do plan to file by yourself, then it’s critical that you review the Manual of Patent Examining Procedure at the USPTO website. It’s heavy on the legalese, but it does lay out all of the required parts of a patent application. Follow it with great care, and you may have some success.

However, patent lawyers spend years understanding how to draft a patent application and honing their skills. This experience enables them to obtain the broadest and most meaningful protection for your invention. Remember, the better written your application is, the more likely it is that it will be allowed.

Wait for a Response from the USPTO

Months or a year or two later, you may receive a response, called an Office action, from the USPTO. Examiners at the USPTO are lawyers who possess specialized technological knowledge. Accordingly, they may reject the claims of a patent application using legal terms and citations that are unfamiliar to most inventors.

It is nearly always advisable to ask a patent attorney to respond to an Office action as they can do so in a manner that is acceptable to the USPTO and also may be persuasive.

Pursuing patent protection is difficult. It helps to have a qualified legal professional at your side to take the mystery out of the process. If you do need help let us know!

Why You Need a Patent Attorney

Don’t Lose Patent Rights

It is common for some individuals or small companies to attempt to navigate the patent system on their own in an effort to save money. With the prices charged by some competitors for patent work, their actions are understandable. However, this is not recommended. There are multiple deadlines and other various dates which can creep up unexpectedly resulting in missed opportunities and lost protection if you are not fully aware of the processes and law.

Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure. How does that affect your ability to file in foreign countries? Each country has some different patent rules. The America Invents Act that changed our patent system from a first-to-invent system to a first-to-file system is a step toward harmonization of our law with the rest of the world. However, differences still exist and the danger remains when traversing the process alone.

  • Can you advertise the invention for sale?
  • Can you share it to potential investors?
  • When do you need to file the application in view of your disclosure?

Posting information on a website is a public disclosure. Many foreign countries prohibit the patenting of an invention after disclosure has been made anywhere in the world. Disclosure to an investor may be OK provided that the investors are required to sign a non-disclosure agreement. Even with proper agreements in place, there is risk in disclosing to investors prior to a patent filing. Additionally, many investors won’t sign these agreements. In this case, the inventors should disclose as little as possible regarding the invention. If too much is disclosed, this could have a significant negative effect on patent rights. Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.

The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings. Saving a bit of money up front often results in the loss of patent rights in the end.

How to Choose the Right Patent Attorney

  1. Are you comfortable talking with your attorney? An attorney is a counselor with regards to legal rights and obligations. They can be very important and useful. However, if you find it difficult to talk to your attorney or just don’t feel that connection then maybe look elsewhere. Additionally, if your attorney lacks the ability to communicate effectively or timely (return calls/emails) then look elsewhere. Trust is built up by effective and useful communication between two parties. If you can’t trust your attorney, then why are they your attorney?
  2. Focus on the competency of the attorney more than firm size. The firm size is not as important as the skill of the attorney working your file. Don’t be fooled by the stigma that attorneys at large firms are better than attorneys at small firms. The correlation between attorney competency and firm size is very small, if non-existent. The correlation between the size of your fee and firm size is more significant than you think. You rightfully should pay the attorney his/her reasonable value…you shouldn’t have to pay extra just because the firm is large.
  3. Don’t be fooled by the sales pitch. Become knowledgeable about the legal process as much as you can. Intellectual property law can be complex. Understanding when something sounds fishy or too good to be true can be difficult. Learn all you can and be prepared with some information when you see your patent attorney. Most are honest and give good advice…some just tell you what you want to hear.
  4. Ask about fees. Fees are done in three ways: Flat Fees, Hourly Fees, Contingency Fees. There is a reason and time for each type. Flat fees work great for transactional work – work that is maybe considered repetitive or easy to gauge in time. Hourly fees are used when the amount of work required is not so easy to predict. Contingency fees are used typically with litigation when the value of the work is based on some sort of settlement or award of money. In particular, ask the attorney how they compute their time and fees, and what sort of things they bill you for (i.e. short phone calls or emails).
  5. Location. Some areas of law require frequent consultations and interactions with an attorney. Think of family law for example. Intellectual property law for the most part does not require as much one-on-one time with your attorney. Keep in mind the attorney should be accessible for you, but the face-to-face meetings are not as necessary in this type of law. Much can be accomplished electronically or via email. Location may be useful but not an absolute necessity. The closest patent attorney is not always the best fit for you and your legal issue. Be open to the idea of looking a little farther out if it means finding a better intellectual property attorney to suit your personality and needs.

Contact us at either of our Houston or Dallas/Fort Worth offices for a free consultation.

How long does it take to get a patent?

When inventors attend a consultation with an attorney, it’s inevitable that they will ask, “How long does it take to get a patent?”

That’s a question that can be frustrating for even a seasoned patent attorney to answer. This is because there are so many variables at play.

It’s also important to remember that there’s no guarantee that you’ll ever receive a patent for your invention. It is a long, complex and potentially costly process. Ultimately, there may be no meaningful protection for your invention.

That’s why it’s critical for inventors and entrepreneurs to work with an intellectual property attorney right from the start. These professionals can advise you with regard to the potential patentability of your invention and perform a search to find out if something similar to your creation has already been patented. This can save you unimaginable amounts of time and money.

However, let’s say that your invention appears to be patentable, novel and unique. A patent search reveals that there’s nothing like it at the U.S. Patent and Trademark Office. How much time will it take to obtain a patent on that invention?

This depends on factors like the type of patent you are pursuing, whether or not you elect expedited processing, the art unit in which your application is reviewed and whether or not you can petition to make your application special. A closer look at these factors may help you to see how long it will take for you to get a patent.

Types of Patents

In the U.S., the three main categories of patents are utility, design and plant. Utility applications, which cover a machine, process or article of manufacture, are by far the most commonly sought. Designs, which cover surface ornamentation or the appearance of an article, are the second most common type of patent application. The third category is plants, and these applications cover a specific genetic combination of an engineered plant species.

Utility patent applications generally require the most time to process. The broader and more novel the subject matter of the application is, the longer it is likely to take to examine. If the improvement is close to known subject matter, then it is considered more limited in scope and likely will require less processing time.

Design patent applications tend to be examined far more quickly because they are shorter and less complicated. It is not unusual for a design patent to be issued within one to two years after filing. However, it may take anywhere from one to five years for a utility patent to be issued.

The Filling Process

A well-written patent application can be produced within a few weeks to a couple of months. The better written the application is, the more likely it is to be examined quickly and favorably. A competent patent attorney knows precisely what to disclose and how to disclose it to obtain the broadest and most meaningful protection possible.

Because the quality of the application is so critical, it is never a good idea for an inventor to write the patent application themselves. It is far better to trust this stage to a professional to save time and money.

Choosing Expedited Processing

Knowing that it can take as long as five years to move from application to issued patent, some inventors are opting for Track One Prioritized Examination procedures at the USPTO. Participation can move you toward final disposition of your application within just 12 months. It’s available for utility and plant applications, and you must pay an extra fee to request prioritized processing.

Art Units

Examiners at the USPTO are broken up into groups called “Art Units.” Art Units are categorized according to common types of technologies. Patent applications are assigned to examiners based on the technology involved in the invention. Some art units are busier than others. The more popular and complex the technology, the longer the processing times are likely to be.

A Petition to Make Special

If the inventor or applicant is over the age of 65 or is suffering from a life-threatening illness, then they may petition to make their application special. This provides them with expedited processing. No fee is required with these petitions, but documentation concerning the age or health of the applicant is mandatory.

If you want to obtain patent protection for your invention, then it’s wise to work with a qualified intellectual property attorney. These professionals take much of the guesswork out of pursuing a patent, which saves you time and money.

Basics of a Patent Claim

A patent application contains many parts. These include components such as a specification, claims, an abstract and drawings. While drawings are not required, all of the other components are.

Perhaps the most important required part of the patent application is the claims. When they are new to patent prosecution, most people don’t know what a patent claim is. That’s why working with a skilled intellectual property attorney is so vital. They can walk you through the process and craft a claims set that protects your invention from every angle.

Continue reading “Basics of a Patent Claim”

How to Register a Trademark in Texas

If your business operates on a national level, then the choice to pursue a federal trademark registration makes sense. Such a registration protects your mark from use by someone else on a nationwide basis.

However, what if you only plan to operate in the State of Texas? A federal trademark registration may not make sense in this situation, especially when there is the option of obtaining a state trademark registration.

In general, obtaining a state trademark registration in Texas is far less complicated, time-consuming and expensive than pursuing a federal registration. When seen in this light, it becomes clear that a Texas trademark registration just makes sense.

What Is a Trademark?

Many entrepreneurs initially don’t understand why they would need a trademark registration. Once they understand the benefits that an official registration grants, they quickly begin to see the advantages.

According to Texas trademark law, a trademark may be a word, phrase, logo, device or symbol. A trademark also may include any combination of these components. The primary purpose of this trademark is to identify the source of the goods or services that are associated with use of the mark. This makes it easier for consumers to always come back to a brand name that they know and trust.

Why Should You Register Your Trademark?

Numerous advantages come with registering a trademark in Texas. Essentially, it formalizes your use and ownership of your particular mark. This means that you are empowered to prevent other individuals or businesses from using your trademark to their benefit.

As an example, suppose that you have invented a new widget that everyone needs to have. You’ve registered a trademark for the unique name of your widget in order to protect your rights.

Then, a competitor comes along, selling a knock-off widget of questionable quality. To make matters worse, that competitor is using a trademark that is confusingly similar to yours. Unless consumers are paying really close attention, they may accidentally buy the competitor’s inferior product, believing it to be yours.

When that knock-off product proves unreliable, the public may form a poor opinion of your company even though the product was made by your competitor.

When your trademark is registered, you have the ability to prevent your competitor from using your trademark. This helps to ensure that any goodwill that your company has earned remains where it belongs.

Texas State Requirements

If you want to register a trademark in Texas, then you’ll have to meet certain requirements.

For instance, you must be able to demonstrate to the secretary of state that your mark was in use in commerce in Texas on goods or services prior to the date on which you applied to register your mark.

Additionally, it’s necessary that your mark be different from other trademarks that are already registered in Texas. The more original and unique your mark is, the easier it will be to register. This also makes it easier for consumers to remember.

The office of the Texas Secretary of State also looks in the registered trademarks at the U.S. Patent and Trademark Office to ensure that the new mark is not identical to an existing trademark.

How to Register for a Trademark in Texas

Applying for a Texas trademark registration is easy.

Just fill out the Trademark or Service Mark Application Form, which can be obtained online. Note that the form must be notarized before it is submitted.

Include three original specimens showing use of the mark in Texas, and be ready to pay the official fees for each class of goods or services for which you are applying.

Next, the state reviews the application and specimens. They follow up if any issues are raised.

The trademark registration will issue if there are no issues. It remains valid for a five-year term, at which time it can be renewed.

Getting a Texas trademark registration is relatively easy when compared with a federal registration. Nonetheless, there can be bumps in the road. If the application is not correctly completed, it can result in significant delays and unexpected costs.

Contact Williams IP Law if you need assistance in registering a trademark in Texas or are looking for general intellectual property advice.

The Pharmaceutical Patent Cliff

The Basic Premise

Like all other business ventures, pharmaceutical companies exist to make a profit. Typically, they achieve this goal by creating a useful new drug that cures or alleviates the symptoms of certain diseases and conditions.

Companies ensure that they have the exclusive right to manufacture and sell these drugs by obtaining patent protection. However, that protection doesn’t last forever. The expiration of a patent means that makers of generic drugs are able to enter the market, and that can mean a huge loss of revenue for the innovating company.

This means that it is critical for these organizations to plan for long-term growth and stability while also continuing to innovate for the future.

Patents for Pharmaceuticals

When a company creates a formula that brings about a beneficial effect in the treatment of an illness or disorder, they file for patent protection with the U.S. Patent and Trademark Office. When such a patent is granted, it provides the owner with the exclusive right to make, use and sell that drug for a period not exceeding 20 years from the date on which the patent application was filed.

When a drug is incredibly successful, it can easily earn billions of dollars for the innovating company. Unfortunately, it can take years to develop a new drug, and it may take even more years of trials before the drug is approved for use by the general public. This means that pharmaceutical companies have only a limited amount of time to financially benefit from sales of the drug. Of course, all of that research and development also is incredibly expensive.

What Is a Patent Cliff?

In recent years, the patents on many blockbuster drugs have expired. These include Pfizer’s Lipitor for lowering cholesterol, the blood thinner Plavix from Bristol-Myers and the antipsychotic drug called Zyprexa from Eli Lilly.

Each of these drugs has earned billions of dollars for their respective creators. However, as the patents come to the end of their terms, each of these companies approaches a patent cliff.

That cliff is represented by a precipitous drop in revenue as generic drug makers begin producing their own, far cheaper, versions of these drugs.

What Does the Pharmaceuticals Patent Cliff Mean Now?

The patent cliff may be good news for consumers and for the employers that provide them with health insurance. This is because the generic versions of drugs typically cost between 20 and 80 percent less than the brand-name versions did. A prescription that once cost nearly $100 per month may cost around $10 once it is available as a generic.

What is good news for consumers and employers is potentially disastrous news for innovating drug makers. Not only will they see their massive profits dissolve but also they will have less money available for researching and developing new blockbuster drugs.

With less money for research, the introduction of new drugs will dramatically slow. This means that people who could benefit from a new prescription drug will have to wait for it, perhaps for years. That can translate to the serious deterioration of the individual’s health or even their death, situations which could be avoided through the swifter availability of effective new medications.

Pharmaceutical Companies Seek to Make Generics Work for Them

Drug manufacturing companies are looking for ways to enter the generic drug market. Sometimes this means manufacturing their own generic version of the medicine. At other times, this means entering a new market somewhere else with the generic drug.

Some companies, such as Pfizer, long ago recognized the upcoming patent cliff and took steps to prepare themselves. Accordingly, Pfizer will manufacture both brand-name Lipitor and the generic atorvastatin in order to maintain as much market share as possible.

Whether your industry is pharmaceuticals or something entirely different, your valuable inventions and innovations may need to be protected with a patent. Work with qualified intellectual property counsel from Williams IP Law to plan a common-sense strategy for tomorrow and beyond.