Patent Trolls Exist

If you have a patent or are considering securing patent protection for a new invention, then one of the things that you need to be aware of is patent trolls.

What is a patent troll? How can they affect you and your patent rights? Inventors with these and other questions are encouraged to schedule a consultation with a Texas patent attorney to discuss pursuing a patent and protecting their rights.

What Are Patent Trolls?

You may hear patent trolls referred to as “non-practicing entities,” or NPEs. A patent troll is an individual or entity that uses legal means to enforce patent rights against individuals or entities that they claim are infringing their patent rights. The troll is trying to collect licensing fees on the patents they own, but trolls don’t build, make or sell anything. Their practice is to obtain or buy patents and then demand that any companies using related technology pay them fees. Accordingly, you could see the work of the patent troll as a form of legalized extortion.

Because of patent troll activity, manufacturers and inventors end up wasting all sorts of time and money defending their rights in patent infringement lawsuits. Sometimes, they conclude that it just makes sense to pay licensing fees to the patent troll rather than fight them.

What Do Patent Trolls Do?

An ordinary company that holds one or more patents usually spends their time and resources manufacturing a product or offering a service. They also likely perform research, looking for new applications and new technology.

Things are really different at an NPE. They spend virtually all of their time and resources in protecting their patent portfolio. However, they are not doing so in order to prevent others from profiting from their exclusive technology that they are using on a product or service. They don’t offer products or services at all. They are only monitoring the marketplace for any technology that might infringe one of their patents. Patent applications that are published by the U.S. Patent and Trademark Office are a great place for patent trolls to look for emerging technology.

That’s because patent trolls prefer to exploit new or otherwise vulnerable companies or individuals who don’t have much in the way of resources to defend themselves. The patent troll is hoping for an early, easy victory that will give them a settlement and probably even induce other companies to do the same.

Because patent trolls do not make, sell or import anything, they are not vulnerable to a counter-assertion that they are actually infringing on the other company’s technology. Patent litigation already is costly and complicated. Without the ability to make this counter-assertion, it can be almost impossible for the patent troll’s victim to prevail.

Patent Trolls in Action

Here’s one example of how patent trolls work. A company called Lodsys is an obvious NPE. They don’t make or sell anything. However, they do engage in lawsuit after lawsuit, each one alleging patent infringement by another entity.

Lodsys appears to specialize in exploiting small app developers. They see a new app come on the market, and they quickly move in with a lawsuit, claiming that the in-app purchasing technology used in the app infringes on one or more of Lodsys’ patents. Both Apple and Google are trying to intervene in some of these lawsuits, but these will take years to resolve.

Consider also the many lawsuits that have been filed by Shipping & Transit LLC. In 2016, this company filed more patent lawsuits in the U.S. than any other. They sue 100 or more small companies each year, claiming that the technology that allows these companies to send tracking numbers to customers is exclusively owned by them via patents that they hold. Many overwhelmed small companies don’t even know how to begin protecting themselves or fighting back.

Mistakes to Avoid

Patent trolls usually make themselves known through a demand or cease-and-desist letter. The worst thing that the recipient of that letter can do is to ignore it. The better choice by far is to consult with a patent attorney so that an appropriate response can be made. Choosing not to respond only strengthens the patent troll’s case down the road.

Plus, if the patent troll receives a strongly worded, immediate response from an attorney, they are likely to just drop their demand. That’s because patent trolls prefer an easier route to collect money. If they encounter swift, decisive resistance, they’ll go looking for victims who are not defending themselves as well.

Can You Protect Yourself Against Patent Trolls?

Patent trolls always bet that their victims won’t know how to react to a demand letter. All too often, people simply throw these letters away, figuring that they are junk mail. Consulting with a Texas patent attorney is the smarter option.

If you are considering entering into a licensing agreement with any entity or individual, proceed with caution. Have a trusted intellectual property lawyer review the terms of the licensing agreement to ensure that it is fair, balanced and appropriate.

Contact the Jeff Williams Law Office today to find out more about how to protect yourself from patent trolls.

7 Common Patent Myths

Debunking Intellectual Property Myths

When you are a Texas patent attorney, certain questions seem to come up in your practice again and again. Many of these relate to popular misconceptions about the world of patents and what they actually do and don’t do.

Below are some of the most common patent myths. This is in no way a comprehensive list, as many other misunderstandings are out there. That’s just one of the reasons why it is sensible for inventors to work with an experienced patent attorney when they are ready to protect their invention. An intellectual property lawyer is there to help you sort through the myths so that you can obtain the broadest and most meaningful patent protection that is available.

Myth No. 1 – The patent office will monitor to see if anyone is infringing my patent.

Unfortunately, this just isn’t the case. The function of a department of the government like the U.S. Patent and Trademark Office is to decide whether or not a patent should be granted for a particular technology. Once a patent is issued, it is the responsibility of the owner to enforce their rights. This may mean having to bring an infringement action against an allegedly infringing party.

Myth No. 2 – Obtaining a U.S. patent gives me patent rights around the world.

If an inventor obtains a U.S. patent, then that patent is only enforceable in the U.S. If the inventor wants to have enforceable patent rights in another jurisdiction, then they must apply for a patent in each of those countries. Inventors who discover that an overseas competitor is making a knock-off version of their product can take legal action to prevent those products from being imported into the U.S., but they may not be able to stop their manufacture in the foreign country unless they have a patent there.

Myth No. 3 – A positive patentability search means that I’ll definitely get a patent.

Patent attorneys frequently encourage their clients to have a patentability search performed before they proceed with filing an application. Such a search can be an informative way to find out whether or not patent protection may be available for the invention and the probable scope of that protection.

However, patentability searches are never perfect. It’s impossible to uncover every existing prior art reference that might affect the patentability of a certain invention. That’s especially true in the case of newly filed patent applications that have not been published at the time of the search. These references won’t appear in the search because they are not publicly available. Nonetheless, by the time your invention is being reviewed by an examiner at the USPTO, he may cite that application as prior art if it has been published in the interim.

Accordingly, a patentability search can help you decide whether or not it is business reasonable to proceed with filing a patent application, but it cannot ultimately determine whether or not you will get a patent or the scope of protection that you will receive.

Myth No. 4 – I have no competitors, so I don’t need a patent.

When you have invented technology that you believe is totally novel, then it’s natural to assume that no one else is doing exactly the same thing that you are. However, what happens when your product or service hits the marketplace and becomes a huge success? How long will it be before competitors start coming out of the woodwork?

If you obtain patent protection for an item that is genuinely novel and inventive, then you have the right to prevent others from copying and profiting from your ingenuity. Without a patent, you’ll be facing an impossible battle.

Myth No. 5 – The patent’s drawings show what’s really protected by the patent.

Many people have this misconception, but unless you are aiming for a design patent, which is used to protect the overall look of a product, then it is the written claims rather than the drawings that really express what’s protected by the patent.

Drawings provide visual representations of examples of the invention. However, it is the claims that particularly point out or specify the subject matter that is covered by the patent. Writing and interpreting patent claims are two incredibly difficult tasks that are best left to a patent attorney.

Myth No. 6 – Ideas are patentable.

A great idea is just that: An idea. It is not possible to obtain patent protection for an idea or a concept. Instead, patent law requires inventors to reduce their inventions to practice or constructive reduction to practice.

Essentially, to be patentable, the technology must be built or readily could be built by someone familiar with the technology.

Myth No. 7 – I don’t copy anyone else’s products, so I can’t infringe their patents.

The claims of a patent can be incredibly subtle and nuanced. Interpreting their exact meaning is rarely straightforward. Even if you believe that your product doesn’t infringe on anyone’s patent rights, that might not necessarily be the case.

In fact, you don’t have to be aware of a patent or a patented product in order to infringe those patent rights. A cease-and-desist letter from the patent owner’s attorney may be the first inkling you have that there is an issue.

Explore Patent Rights with Williams IP Law

Are you ready to find out more about patents and how they can protect your innovations? Contact the Law Office of Jeff Williams today to schedule a free consultation.

What Is a Provisional Patent Application?

A great deal of intellectual property terminology is carelessly tossed around these days with the result that there’s confusion in the public about these terms. Consequently, people wonder about what a trademark is and how it’s different from a copyright. Or, they have serious questions about “provisional patents.”

This last question is especially troubling to legal professionals who work in the realm of intellectual property because there’s no such thing as a “provisional patent.”

However, there is a “provisional patent application,” and it can be a powerful tool for inventors in the U.S. Unlike a regular, non-provisional patent application, a provisional patent application is never examined by the U.S. Patent and Trademark Office. It is never published, and it will never mature into an actual patent.

This may make it sound as if filing a provisional patent application in the U.S. is a waste of time, but that is absolutely untrue. Some inventors have exceptionally good reasons for filing this type of application, and your patent practitioner may recommend that you do so based on the status of your invention.

Benefits of a Provisional Patent

  • A provisional patent costs significantly less than an actual patent.
  • It’s easier for someone to file a provisional patent on their own than an actual patent.
  • Inventor can use the “patent pending” on their idea for 12 months.
  • Gives the inventor time to build and test their patent and refine it.

First to File

In the U.S. and other countries, it doesn’t matter so much who is the first to invent a new product or process. Instead, the real race is to be the first person to file a patent application for the idea. This is because the law states that whoever is the first to file a patent application is the rightful owner of the invention.

If another individual files a patent application for the same invention, then they have virtually no chance of obtaining patent protection because someone else got there first. Accordingly, a provisional patent application is one tool that may be used to ensure that the applicant is the first to file the paperwork.

What Is Contained in a Provisional Patent Application?

A provisional patent application typically is shorter and less formal than a non-provisional patent application. This is because the disclosure will never be reviewed by the U.S. Patent and Trademark Office. Nonetheless, the provisional patent application must contain a clear and concise disclosure that adequately describes the subject matter of the invention.

Unlike a non-provisional patent application, a provisional patent application does not need to have claims. It may include drawings to further illustrate the subject matter of the application.

How much does a provisional patent cost?

There are some things that can change the cost but in general filing a provisional patent application with the USPTO can cost anywhere between $70-$280.

Once the provisional patent application is received and approved, the inventor is now entitled to describe the invention as patent pending throughout the 12 month allotted period.

Why File a Provisional Patent Application?

One of the main reasons to file a provisional patent application is to meet the first-to-file requirement in accordance with U.S. intellectual property law. The first person who files is far more likely to receive any available patent protection than an applicant with a later filing date.

The provisional application lasts for precisely 12 months. During this time, the applicant may make improvements or refinements to their invention. They also may work on formalizing their patent application, such as completing claims that more specifically point out the subject matter that they seek to protect.

Filing a provisional patent application also allows the inventor to say that their creation is patent pending. This can be enormously attractive when seeking funding or partners for the endeavor. Moreover, the filing of a provisional application provides an earlier effective filing date for any non-provisional or foreign application that is filed later.

Is a Provisional Application Right for You?

The best way to find out is by consulting with a qualified patent attorney. They can suggest the best method for seeking patent protection for your invention, and they may recommend performing a search to ensure that patent protection likely is available for your idea. In the long run, this saves you time and money.

Additional Things to Know

  • A provisional patent is valid for one year.
  • After the 12 month period a provisional patent application cannot be extended or renewed.
  • USPTO only reviews the provisional patent applications to make sure the meet the minimum filing requirements.
  • USPTO does not examine provisional patent applications.
  • A provisional patent cannot be file for a design.
  • Provisional patent applications are not generally published by the USPTO or publicly visible.

Closing

At the Law Office of Jeff Williams we help clients navigate through all the intricacies of intellectual property including provisional patent applications.

Patent Litigation

Patent attorneys spend most of their time working to obtain patent protection for their clients. However, their careers involve a second critical facet, that of pursuing patent litigation.

If you are concerned that someone is infringing your patent, or if someone has accused you of infringing their patent rights, contact Williams IP Law today. Otherwise, keep reading to learn more about patent litigation and why it’s important.

Defining Patent Litigation

When one party believes that another party is using their patented technology without permission, then the patent holder may choose to file a civil lawsuit against the allegedly infringing party. Typically, these legal actions are filed in a federal district court, and the plaintiff may ask for relief such as monetary damages and an injunction that prevents the infringer from using the protected technology.

The law requires that patent holders take action against an alleged infringer no more than six years after the infringing date.

The Importance of Patent Litigation

People obtain patents because they want to have the exclusive right to benefit from their hard work. Nonetheless, it is not unusual for another person or entity to infringe those rights. Thanks to patent litigation, it is possible for the wronged party to take the infringer to court.

Before beginning a lawsuit, it is critical to know that patent litigation is costly and that it can take years to settle a case. In many situations, the plaintiff is an individual or a small company while the defendant is a huge corporation with deep pockets.

Accordingly, it can be highly challenging for the plaintiff to prevail.

Penalties in Patent Litigation

When a plaintiff does win their case, then the court may impose one or more penalties on the defendant. These penalties may include actual damages, which are the profits that the patent holder lost due to the infringement, and royalties for the unauthorized use of the technology. Royalties usually are calculated based on other royalty agreements already in existence, the remaining term of the patent and the type of product that is covered by the patent.

The defendant also may be required to pay the legal costs incurred by the plaintiff. These may include attorney’s fees, litigation expenses and court filing fees.

Other possible penalties include an exclusion order through the International Trade Commission or a negotiated settlement. A negotiated settlement effectively ends the lawsuit without having to go to trial. However, negotiated settlements also may occur during the trial, giving the parties a chance to decide on a settlement that is not dictated by the judge.

In a negotiated settlement, the attorneys decide upon the appropriate monetary award for the plaintiff. This is the route that approximately 70 percent of all patent infringement lawsuits take, and these settlements are most frequently achieved within about one year of litigation. By contrast, only four percent of such lawsuits go to a judge’s decision at the end of trial.

The parties involved in a patent lawsuit alternatively may decide to settle their differences via mediation or arbitration rather than going to trial. Mediation can be an excellent means for avoiding the costs of a trial, and the process frequently leads to a settlement.

While defendants who lose a patent lawsuit frequently are ordered to pay penalties and costs, this may not be the end of the consequences. The court may decide to place a preliminary or permanent injunction on the infringer. A preliminary injunction may be issued at the start of the lawsuit if the plaintiff can demonstrate that they have a high probability of winning the case. The patent holder further must prove that they will suffer financial hardship if manufacturing and selling of the infringing product continues, and the preliminary injunction may be granted if there is no harm to the public’s interest or opinion.

Preliminary injunctions are rare because the standards for obtaining them are high.

At the end of the case, the court may grant a permanent injunction that prevents the infringer from manufacturing products with the infringing technology.

Patent Litigation Basics

Both federal and state laws cover patent litigation. Most lawsuits are concerned only with the federal patent laws. State patent laws are mainly focused on questions of patent ownership and contractual law.

Federal district courts handle patent litigation matters. Their responsibilities include interpreting the Constitution and the federal statutes, creating new laws, applying the federal rules of evidence to cases and applying the federal rules of civil procedure.

Another party that is critical to the patent process is the U.S. Patent and Trademark Office, or USPTO. This is the government department that is responsible for examining patent applications and issuing patents. Many patent litigation cases begin in an office of the USPTO known as the Patent Trial and Appeal Board. When issues cannot be resolved at this level, then the parties may decide to file a lawsuit in federal court.

Who Has the Right to Sue?

In general, the co-owners of a patent, the patent holder or an exclusive licensee of the patent have standing to sue an alleged infringer. It is not possible for non-exclusive licensees or distributors to sue for patent infringement.

Who does the patent holder sue? Usually, it is the person or entity that produces, sells, imports or uses the product that infringes the patent. The plaintiff also may choose to sue any person or entity that contributes to these activities.

Employees of a company may be personally liable for the infringement, but the company’s directors are not necessarily liable as well. A person is only considered liable if they had either indirect or direct knowledge of the patent infringement and they had willful blindness. Willful blindness refers to steps taken to avoid learning about the patent itself.

The courts have the discretion to add or remove parties that are suing or parties that are being sued.

The Types of Patent Infringement

Assessing patent infringement involves comparing the patent claims and the allegedly infringing product.

It may be discovered that literal infringement has occurred, in which case a direct relationship is established between the product and the words included in the claims of the patent.

Contributory infringement may occur when a third-party is responsible for giving the infringing party a component that has no utility beyond creating an infringing product.

When the infringer intentionally disregards someone else’s patent, then willful infringement may have taken place.

Infringement may be either direct or indirect. Direct infringement involves a competitor manufacturing a copy of another company’s product without the permission of the patent holder while indirect infringement occurs when a person or entity assists a third party to make a product that infringes a patent.

Even if the court determines that no actual infringement is occurring, it is possible that the doctrine of equivalents will come into play. This doctrine broadly states that a product may infringe a patent if it produces similar results in the same way. While the doctrine of equivalents does have limitations, it can be a powerful tool in patent litigation.

Defenses for Patent Infringement

What if you find yourself in the unenviable position of being sued for patent infringement? The best course of action is to engage the services of a skilled patent litigation attorney. This legal professional will have numerous defenses that can be used to fight the allegations.

These defenses may include proving that the patent at issue is not novel and that its claims are obvious to someone who is skilled in the art. Your attorney may uncover false information provided by the patent holder to the USPTO when they applied for the patent.

Arguments against the patent’s usefulness, a lack of description or the definiteness of the claims similarly may be available. Other defenses also may prove useful.

Get Legal Counsel First

Whether you believe that your patent is being infringed or you are being sued for patent infringement, it is critical that you do nothing before speaking with a qualified patent litigation lawyer.

At the outset of such a complicated legal matter, it is impossible to know how things might turn out in the end. The things that you say and do in the beginning of the case may make things more complicated for you down the road.

If you receive a letter from a person or company claiming that your products are infringing their patent, call an attorney before making any kind of reply.

Similarly, if you stumble across a product that you believe infringes your patent, it is always wisest to contact an intellectual property lawyer before taking any steps.

These legal professionals are adept at interpreting the claims of patents and comparing products to those claims. With their assistance, you can begin to either enforce your patent rights or refute the allegations of infringement made by a patent holder.

The critical thing is to remain calm. Then, ask for legal advice. Many of these situations can be resolved with a couple of letters and perhaps a few telephone conferences. Most of them never turn into lawsuits. Going to trial is even rarer.

When you work with competent legal counsel, you stand a much better chance of achieving the outcome you are hoping for.

Contact Williams IP Law

Jeff Williams and the staff at Williams IP Law have helped many clients deal with patent litigation. These situations can be complex and immensely challenging, but with the right experience and legal knowledge, it frequently is possible to resolve them well before a lawsuit or a trial is necessary.

Contact Jeff Williams today to schedule a consultation about any potential patent litigation matters.

What is a patent broker?

When a large company obtains a patent, they frequently have the resources that are required to put it to use. That is, they have a manufacturing division that will be building the new product. Or, perhaps the patent covers a small refinement to an existing product. In this case as well, the company will simply incorporate the new component into their assembly process.

However, it is not only multi-national conglomerates that obtain patents. Some patents are owned by individuals or a very small new business that is just getting started. What can you do with a patent when you don’t also own a factory and a warehouse?

Many options are available, such as licensing your patent rights to a company that wants to make your product or incorporate it into their existing product.

Another option is to sell your patent rights through a patent broker.

What Is a Patent Broker?

Imagine that you own a home that you would like to sell. In order to save yourself some money on Realtor commissions, you decide to list the home yourself.

The problem with this approach is that it’s quite a bit of work. Despite staging the home and holding several “open house” events, several weeks or even months go by without anyone making an offer on the property.

You start to get worried. A great deal of time and money has been spent trying to get this house sold, but nothing is happening.

Would it have been better to engage a Realtor in the first place?

A patent broker is kind of a like a Realtor for a patent. They use their business connections to try to sell your patent. Sometimes, this happens in an auction.

This sounds like the ideal set up, and in some cases, it can work. However, working with a patent broker usually isn’t the best option for a number of reasons.

Potential Problems with Patent Brokers

As in any profession, some patent brokers are more trustworthy than others. This is problematic because it can be difficult to know which broker can be relied upon and which one is really just looking after his own interests.

Consider that a patent broker is allowed to represent both the buyer and the seller in any transaction. This means that the broker isn’t wholly vested in making certain that you, the seller, gets the best possible deal. Obviously, this can be bad news for the patent owner.

Another problem is that patent brokers sometimes offer to buy a patent at one price, but then sell the patent to someone else at a much higher dollar amount. This represents a nice profit for the broker, though it hardly seems fair to the original patent owner.

Moreover, patent brokers may collect a finder’s fee from the buyer of the patent, which may again cause them to put their interests above those of the seller.

It’s also possible that patent brokers may share privileged or confidential information with a potential buyer. If you have data that you prefer to keep confidential, then you may not want to work with a broker.

Working with a Patent Attorney Is Different

When you engage a patent attorney, they are legally and ethically bound to solely protect your interests. Your attorney may represent you in a transaction, but he most certainly will not also be representing the other side, which would be a clear conflict of interest. The result is that you are much more likely to close a fair deal.

You attorney will always keep your confidential information private, even while negotiating a purchase contract, which means that you don’t have to worry about proprietary data getting into the wrong hands.

Just as critically, a patent attorney can provide you with valuable legal advice regarding the scope of your invention so that it can be implemented without infringing someone else’s patent.

Intellectual property lawyers even can assist you to explore patent monetization strategies that can help you put your patent to work while cutting out the expense and potential pitfalls of working with broker.

Work with Williams IP Law

If you have obtained a patent, then it’s vital to realize that this is a valuable asset to you or your business. Getting a patent is costly and time-consuming, which means that you are probably excited about the opportunity to actually start making a profit from all of your hard work.

Is engaging a patent broker the right step? It might be, but in most cases it is wiser to work with an experienced patent attorney like Jeff Williams who can provide the sensible guidance that you need.

If you are looking for a way to monetize your patent, contact the Law Office of Jeff Williams today.

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.

1. 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.

2. 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.

3. Choose the Type of Patent 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.

4. 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. We have also have another blog specifically on patent drafting.

Benefits of Self-Drafting

Below are some of the benefits of preparing and filing your own patent application:

  • You can potentially save thousands in patent attorney costs.
  • You are more flexible on when you file and do not have to wait on anyone else’s schedule.

Risks of Self-Drafting

Below are some of the risks of preparing and filing your own patent application:

  • Costly mistakes in preparing the patent application could result in the loss of some or all of your patent rights.
  • A significant amount of time will need to be spend learning how to prepare and file a patent application.
  • You may not be ready to file for patent protection in foreign countries within one-year of your patent application.

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.

5. 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!

We have also written a more in depth step by step patent process to assist.

How to Conduct a US Patent Search

Before filing a patent application, most intellectual property lawyers recommend that their clients authorize them to perform a patent search.

However, it’s not unusual for many clients, especially those who are extremely conscious of costs, to forego a search.

While this frequently is inadvisable, it’s by no means prohibited. There is no legal requirement that a patent search be performed before an application is filed.

Still, it can be useful to know before filing an application whether or not patent protection is likely to be available. Even more critically, it helps to know what scope of protection is likely available. For instance, is this truly a brand new, never-before-seen invention or is this a refinement of existing products?

If it’s the latter, then it’s helpful to be able to narrow down the valuable nugget of the improvement so that the claims can be directed to this subject matter.

What is a patent search, and how is one performed? Let Williams IP Law guide you through this complex subject.

What Is a Patent Search?

Sometimes called a patentability search, this is a search through existing patents and other documents that are available to the public. These patents and documents are referred to as “prior art.”

The purpose of the patent search is to find the prior art that comes the closest to your invention. Effectively, this is what an Examiner at the U.S. Patent and Trademark Office also does, looking for prior art that may be used to argue that your invention is obvious and not new when compared with the prior art.

While this type of search will not tell you whether or not your invention will infringe someone else’s patent, it can identify the closest prior art to help with a determination as to how patentable the invention is and which parts are unique when compared with the prior art.

The purpose of the patent search is to save the inventor time and money. After all, what’s the use of paying to have an application drafted, filed and examined if the invention has already been patented?

The cost of a patent search is far less expensive in comparison.

Can You Do Your Own Patent Search?

Some inventors decide to perform their own patent search to save some money. This may make it more affordable for them to proceed with the drafting and filing of the application.

If you’re interested in doing your own patent search, use these steps:

  1. Brainstorm descriptive terms
  2. Search CPC scheme at the USPTO website
  3. Review the classification definition
  4. Find issued patents using the appropriate CPC classification
  5. Review each patent
  6. Find published patent applications
  7. Consider broadening your search

Let’s take a closer look at each of these steps.

Brainstorming

The first step involves writing a description of your invention. Try to be as specific as possible, and consider synonyms for any of the words that you might use to define or describe your invention.

Are there certain keywords or technical terms that describe your invention? It may be helpful to consult resources such as dictionaries and thesauruses to get ideas.

Searching CPC Schema

Now, it’s time to visit the USPTO.gov website. Use the search text box at the top right corner of the screen.

In the search box, enter “CPC scheme” and one of the keywords that you brainstormed in the first step.

The USPTO follows CPC classification schema. When you type “CPC scheme” into the search box, it will return results that include entries on the Class-Subclass Scheme page.

You can run this search as many times as you like, searching for other keywords to find the classification titles that look most relevant to your invention.

An example class/subclass classification or identifier might look like “2/456.” The two corresponds to Class 2, which is Apparel while the 456 subclass refers to Body cover.

Review Classifications

Some of the classification titles in your search results will be underlined. If so, then this title is hyperlinked to a CPC Classification Definition. These definitions are useful when it comes to establishing the scope of the chosen classification. Accordingly, this helps to determine if you have found the most relevant classification.

Clicking on these hyperlinks always is worthwhile because they may provide further search suggestions or search notes.

Find Patents Using the CPC Classification

Head back to the Home page at the USPTO.gov website, and click on the Find It Fast Quick links Patent window located just below the search text box.

This will bring up a link labeled PatFT under the Patents heading. Click on this link to go to the patent search page.

The CPC Classification that you found can be placed in the search menu under Term 1. For the Field, choose Current CPC Classification.

Click Search, and you’ll receive a list of issued patents. Click on the number or title of any listed patents to read the full text of the patent. Some will have an “Images” button that will give you a full PDF of the patent.

It’s wise to review at least the first page of all of the entries. If you find any that seem really similar to your invention, make note of them.

Review Selected Patents

Now it’s time to fully examine each patent that you made note of in your search. Pay particular attention to the drawings and claims to determine just how similar they are to your invention.

Find Patent Publications

Go back to the USPTO.gov main page. Once again, click on the Quick Links window, but this time, select the AppFT under the Patents heading.

This takes you to a similar search screen, but now you are searching for published patent applications which have not issued as patents.

The search process is the same as far as entering in the CPC Classification number and reviewing for the most relevant results.

Broadening Your Search

It may be wise to use the PatFT and AppFT search systems to look for keywords as well. Additionally, some inventors decide to look for foreign patents using the Espacenet website. This could be especially important if you have hopes of patenting your invention in other countries.

Patent Searching Is Imperfect

No matter who conducts your patent search, it is critical to realize that no patent search is perfect. It is impossible to find absolutely every reference that might have some relevance, and there may be unpublished patent applications that are not available at the time of your search but that become available by the time your application is being examined.

In other words, a patentability search can provide guidance and insight, but it is in no way any kind of guarantee that you will get a patent for your invention.

Opt for a Professional Patent Search

Patent searching is complex, and it usually is advisable to have a professional conduct the search so that you get the broadest possible picture of the prior art before you go to the trouble and expense of filing a patent application.

Contact Williams IP Law today if you have more questions about patent searching or filing patent applications. Our experienced practitioners and staff can guide you through the process of pursuing patent protection.

How long does it take to get a patent?

We outline how long it takes to get a patent and what you should expect throughout the patent application process.

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 Patents

Utility applications, which cover a machine, process or article of manufacture, are by far the most commonly sought.

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 Patents

Designs, which cover surface ornamentation or the appearance of an article, are the second most common type of patent application.

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.

Plant Patents

The third category is plants, and these applications cover a specific genetic combination of an engineered plant species. A plant patent is granted by the United States government to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.

Plant patents normally take close to two years for the patent office to grant or reject a plant patent application.

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.

Abandonment & Allowance

Abandoned means that the trademark application is no longer pending and cannot mature into registration. This will happen because you’ve given up on the pursuit or you lost track of the process.

In the application process the examining attorney will issue an office action letter to the applicant stating the status of the of the application. The applicant then has up to 6 months to respond if they want to continue through the process or the patent will be considered abandoned.

Closing

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.