ESTABLISHING A LEGAL MONOPOLY THROUGH PATENT LAW By Gold & Rizvi, P.A. The Idea Attorneys

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ESTABLISHING A LEGAL MONOPOLY THROUGH PATENT LAW By Gold & Rizvi, P.A. The Idea Attorneys PATENT BASICS In its simplest form, a patent is a legal monopoly granted by the United States Government to

1 ESTABLISHING A LEGAL MONOPOLY THROUGH PATENT LAW By Gold & Rizvi, P.A. The Idea Attorneys PATENT BASICS In its simplest form, a patent is a legal monopoly granted by the United States Government to an inventor to enable the inventor to commercially exploit the benefits of his or her creativity. A patent permits an inventor to exclude others from making, using, selling, or importing an invention in the United States without the inventor s permission. PATENTS AS VALUABLE PROPERTY Patents are essential business assets that can enhance profit margins, contribute to monopoly or licensing revenue, and increase market share and name recognition for your company and its product lines. Without adequate legal protection, it is only a matter of time before existing and new competitors enter the market, steal your idea, and drive down prices. Patent rights can be sold outright or licensed to one or more parties in exchange for royalties. DIFFERENT TYPES OF PATENTS There are two major types of patents issued by the United States Patent & Trademark Office, namely, utility patents, and design patents. A utility patent protects the function of an invention. The term of a utility patent is 20 years from the date of filing. A design patent protects the overall appearance of an invention and is granted for any new, original, and ornamental design for an article. The term of a design patent is 14 years from the date of issuance. WHAT CAN BE PATENTED? A utility patent may be granted for a new product or process as well as functional improvements to existing products or processes. Where an idea relates to the improved decorative appearance of an item, it may be protected with a design patent. The vast majority of granted patents cover products or processes that are improvements on something that is already known. The subject matter sought to be patented, however, must not be seen as being obvious in light of what is already used or described. Common and well known substitutions of one material for another, for example, or insignificant changes in the color or size of a product are normally not patentable. AVOID T HE INADVERTENT LOSS OF PATENT RIGHTS Revealing an invention to others even a single day before applying for a patent may lead to the complete loss of patent rights. Without adequate patent protection in place, your invention will be completely free for anyone to use. In order to avoid this scenario, it is important to consult with an attorney licensed to practice before the United States Patent and Trademark Office before disclosing a new idea. At Gold & Rizvi, P.A., all of our attorneys are Registered Patent Attorneys licensed to practice before the United States Patent & Trademark Office. A complete listing of all U.S. Registered Patent Attorneys can be found online at the Patent Office website (

2 2 GUARANTEED CONFIDENTIALITY It is natural for an inventor to be concerned about the confidentiality of their inventions. As Registered Patent Attorneys licensed to practice before the United States Patent & Trademark Office, we are legally bound by Title 37 of the Code of Federal Regulations (Section 10.57) to maintain the confidentiality of a client s invention. In addition, we typically provide each of our clients with an executed Confidentiality and Non- Disclosure Agreement assuring that all information provided will be held in the strictest of confidence. THE PATENT SEARCH Although not required by the Patent Office, it is generally a good idea to have a patent search conducted to ascertain the existing state of the art for the field of your invention. Should you elect to have a patent search conducted before filing an application, our attorneys will provide a detailed written opinion of patentability along with copies of all references found. THE PATENT APPLICATION Before a patent is issued by the United States Patent Office, a detailed application must be prepared and filed with the USPTO clearly specifying what the invention is and how it can be made and used. A patent application includes an abstract, claims, a declaration, a governmental filing fee, and typically several sheets of drawing figures. The most important part of a patent application are the claims. The claims define the the metes and bounds of the invention and are the foundation upon which your legal rights are based. An experienced patent attorney is able to carefully draft claims to ensure that potential infringers are prevented from making, using, or selling an invention despite insignificant modifications or improvements to the patented product. The claims of a patent are analogous to the property lines on a parcel of real estate and can be used to prevent unlawful encroachment by others. The preparation of a quality patent application entails countless hours of painstaking attention to the nuances of a new idea and is widely recognized as the single most difficult legal document to draft. PATENT PENDING STATUS Once we file a patent application, the invention is considered Patent Pending and can be freely disclosed to potential licensees, manufacturers, investors, and other interested parties. In order to have a patent pending within the shortest time frame possible, we begin work on a new application immediately upon being retained and typically have a draft prepared within four to eight weeks from that date. INTERNATIONAL PROTECTION A U.S. patent can be used to prevent others from making, using, selling, and even importing an infringing invention into the United States without the inventor s permission. Foreign patent protection is available through a variety of differing international treaties. Our firm files international patent applications under the Patent Cooperation Treaty (PCT) upon request and we work with associates throughout the world in the regional and direct filing of foreign patent applications. Should foreign patent protection be desired, it is very important to file a patent application in the United States before any public disclosure of the invention.

3 3 PROVIDING US WITH A DETAILED DESCRIPTION OF YOUR INVENTION We have developed the following guidelines in order to assist you in providing us with a complete and detailed description of your invention: FOR A NEW OR IMPROVED PRODUCT Describe the structural elements / components Describe step-by-step how the invention is constructed/assembled Describe any interaction/cooperation of components, e.g., during use Describe the environment in which the invention is intended for use Describe the purpose/function of the invention FOR A NEW OR IMPROVED METHOD OR PROCESS Describe the minimum number of steps required to carry out the method of the invention Describe additional and/or alternative steps that may be included For quantifiable variables (e.g., time, temperature, composition, etc.), provide maximum and minimum values and/or value ranges, as well as preferred values and/or value ranges Describe possible variations in the order of the method steps Describe the purpose of the invention FOR NEW SOFTWARE OR INTERNET- BASED BUSINESS METHODS Provide a general flow chart of the overall process as well as detailed charts of all significant subroutines. Any available screen shots and tables should also be provided. DISTINGUISHING YOUR INVENTION FROM EXISTING TECHNOLOGY In order to persuasively distinguish your invention from the prior art, it is helpful to address the following: State the problems, limitations and disadvantages associated with existing technology but overcome by the invention. What new elements (e.g., components, process steps, circuitry) or combinations of known elements or software algorithm produced the improvements over known technology? What is the closest known technology? What are the potential known applications for use of the invention? Describe possible alternate embodiments of the invention (e.g., alternate structural designs, components, materials, process steps, etc.) WORKING MODELS, PROTOTYPES, AND ILLUSTRATIONS A working model or prototype is not necessary before the filing of a patent application. Often, however, clients will provide us with handdrawn sketches or drawings of their invention. Where the invention is a process or method, a flow chart showing the steps can be prepared. Such materials are very helpful to us in understanding the unique features of the invention and provide a starting point from which professional patent illustrations can be prepared.

4 4 LEGAL FEES AND COSTS FOR OBTAINING A PATENT No discussion of patenting can be complete without due attention to the costs and legal fees involved in pursuing protection. The preparation of a quality patent application typically takes approximately six Our affordable flat-fee rates help clients avoid the uncertainty inherent in time-based hourly billing systems. weeks to prepare and entails countless attorney hours of painstaking attention directed towards drafting claims of appropriate scope. As such, preparation of a patent application is widely recognized as one of the most difficult legal documents to draft. Our office provides a flat-fee rate whenever possible for patenting matters to assist clients in keeping costs within their budget. Before initiating work on a new matter, we will carefully review the details of your invention and provide a fixed-fee for our legal services PATENTING FEES UNITED STATES PATENT SEARCH Mechanical $500-1,800 Electrical/Mechanical $500-1,800 Electrical $850 2,000 Software / Bus. Method $850 2,500 Chemical $1,200 2,500 Biotechnology $1,200 3,000 UNITED STATES DESIGN PATENT Typical legal fee $1,250 UNITED STATES UTILITY PATENT Mechanical Simple $3,000 8,000 Complex $8,000-12,000 Electrical-Mechanical $4,000-12,000 Electrical $5,000-15,000 Chemical $5,000-15,000 In general, the filing of a design patent Software /Business Method $5,000 15,000 can be completed for under $2,500 including illustrations and governmental filing fees. Biotechnology $5,000 15,000 The costs for filing a utility patent application, however, vary greatly, and must be quoted on a case-by-case basis after reviewing details of the invention. The legal fees for filing a utility patent depend generally on the complexity of the invention, the number of drawing figures and moving parts, the distinguishing characteristics of the invention over existing products or processes, and the quality of written material initially provided to us by the inventor. TIME FOR PAYMENT We generally require advance payment covering one-half of anticipated legal fees before commencing work with the balance due before filing. Governmental filing fees and patent illustrator fees (if needed) are not included. Expedited surcharges may apply for rush filings. POST FILING SERVICES Office Action Responses $800-2,500 Petitions to the Commissioner of Patents $500 1,800 FOREIGN PATENT PROSECUTION Our fees for filings outside of the United States will be quoted on a case-by-case basis and depend upon the particular countries of interest and the filing strategy (PCT, EPO, etc.) desired.

In addition, Glenn provides opinions on patent and trademark availability and infringement. Before joining Gold & Rizvi, P.A., Glenn worked in-house at Motorola, Inc.

5 STATEMENT OF QUALIFICATIONS & EXPERIENCE 5 GLENN E. GOLD REGISTERED PATENT ATTORNEY JOHN RIZVI REGISTERED PATENT ATTORNEY Glenn E. Gold is a Registered Patent Attorney concentrating his practice on the preparation and prosecution of U.S. and international patent and trademark applications. In addition, Glenn provides opinions on patent and trademark availability and infringement. Before joining Gold & Rizvi, P.A., Glenn worked in-house at Motorola, Inc., concentrating primarily on patent prosecution matters and in private practice with the patent prosecution group at Quarles & Brady, LLP. With more than 450 lawyers practicing from offices in Florida, Illinois, Wisconsin, and Arizona, Quarles & Brady is among the 60 largest law firms in the United States. Clients of the firm deal directly with founding partners Glenn Gold or John Rizvi on all of their patenting matters. Prior to becoming a Patent Attorney, Glenn worked as an Engineer for Motorola Inc. in Phoenix, Arizona (Semiconductor Products Sector) and Ft. Lauderdale, Florida (Land Mobile Products Sector). While an Engineer at Motorola, Inc., Glenn gained considerable experience with a vast array of product-related technologies including, for example, printed circuit board processing, integrated circuit (chip) processing/packaging, and liquid crystal display (LCD) processing. Glenn received his Juris Doctor (J.D.) degree from the University of Miami, and a Bachelor of Science (B.S.) degree in Material Science Engineering from the University of Florida. Glenn is licensed to practice before the United States Patent & Trademark Office in Washington, D.C. GlennGold@IdeaAttorneys.com John Rizvi is a Registered Patent Attorney focusing on the preparation of U.S. and international patent and trademark applications as well as related licensing and contractual matters for the past 16 years. John is AV rated by Martindale-Hubbell, the highest peer-review rating possible. Additionally, for the past 8 years, he has been an Adjunct Professor of intellectual property law at the Nova Southeastern University Shepard Board Law Center and has been featured in Inventor s Digest, Inventare Maximus, Intellectual Property Today, the South Florida Business Journal, The American Lawyer, The Orlando Sentinel and The Sun-Sentinel for his expertise in the field of patent law. He is also the author and narrator of Patent Protection: A Practical Guide for Inventors, part of an educational audio series produced to explain the nuances of the patenting process. Before co-founding the firm, John spent several years as a Registered Patent Attorney at the internationally renowned intellectual property law firm of Fish & Neave in New York City. With over 200 intellectual property attorneys, Fish & Neave is recognized as one of the top patent firms in the world and was retained by Thomas Edison, Henry Ford, the Wright Brothers, and Alexander Graham Bell when they desired protection for their ideas. John received his Juris Doctorate (J.D.), from the University of Miami School of Law, and has a Bachelor of Science degree (B.S.), in Civil Engineering from the Florida Institute of Technology. He is licensed to practice before the United States Patent & Trademark Office in Washington, D.C. JohnRizvi@IdeaAttorneys.com

Patents. What is a patent? What is the United States Patent and Trademark Office (USPTO)? What types of patents are available in the United States?

Patents. What is a patent? What is the United States Patent and Trademark Office (USPTO)? What types of patents are available in the United States? What is a patent? A patent is a government-granted right to exclude others from making, using, selling, or offering for sale the invention claimed in the patent. In return for that right, the patent must