San Francisco Reno Washington D.C. Beijing, China PATENT TRADEMARK FUNDING BROKER INVENTOR HELP Toll Free: 1-888-982-2927 San Francisco: 415-515-3005 Facsimile: (775) 402-1238 Website: www.bayareaip.com Email: info@bayareaip.com Mailing Address: P.O. Box 210459 San Francisco, CA 94121-0459 Via email Re: Basic Things to Know About Patents Greetings, Now that you have the patent search results, it is a good opportunity to understand a little bit about patents, patentability, patent protection, and why it matters. The patent search results and assessment is the first step towards best protecting and profiting from your invention if it is deemed feasible. Below are some helpful background and basic concepts it will be useful for you to be aware of. Please contact us if you have any specific questions on this or any patent related matter. Profit from Patent Protection Inventors begin to realize success by applying for a patent. Even Thomas Edison and Alexander Graham Bell followed through with patents for their inventions, enabling them to achieve financial success. In many cases, the best ideas have been minor changes to existing inventions. The paper clip made millions of dollars for its inventor. Millions more were made by the inventor who added serrated edges to it. Neither inventor would have prospered without a patent. The main objective of most inventors is to use the patent process to profit from an invention. A patent will provide a legal basis for you to be paid royalties or a lump sum by a company for the right to make, use and/or sell your idea. Additionally, you can use the patent to maintain yourself as the exclusive source of the invention. The value of your idea may well depend on the steps you take to acquire patent rights. An investment in a patent for your invention could be the best investment you will ever 1
make. You have already taken an important first step by having our Patent firm conduct a preliminary patentability search. To the extent that your invention has benefits or advantages, you should now consider taking the next step and apply for a patent. Utility and Design Patents A patent grants inventors exclusive legal ownership rights for their inventions. When a patent is obtained, an invention may not be lawfully manufactured, duplicated, used or sold without the inventor s consent. Patents provide a legal basis for profitability. A utility patent protects the structural and functional aspects of an idea, and once issued, usually lasts for 20 years from the date the application is filed. Utility patents can be obtained in the U.S. by pursuing either a utility or an international patent application. As explained in detail below, a provisional utility patent application may be filed prior to a non-provisional utility or international patent application. The provisional utility patent application provides Patent Pending status for one year and establishes priority for the next application. A substantial amount of the cost to prepare the provisional application will be credited to the next step. A design patent protects the decorative aspects of an invention and has a term of 14 years from issuance. Design patents are appropriate for certain inventions, but, not all. The protection, if obtained, will not include coverage for functional aspects. If the essence of an invention is its decorative appearance, or if the final version has a unique aesthetic look to it, design patent protection should be pursued. It may even be appropriate to seek both utility and design patents for an idea, or even multiple patents for various versions of the idea. Specific aspects of your invention may also qualify for separate patent protection. Obtain Patent Pending Status Patent rights can be valuable as the building blocks of an effective marketing strategy. Many manufacturers and distributors will not even review new product ideas until the invention has obtained at least Patent Pending status. Upon filing a patent application, your invention will attain Patent Pending status, which can deter others from copying your idea. Patent Pending status can also stimulate marketplace interest for a new or improved product. It is important to pursue Patent Pending status in a diligent manner and to file your application promptly. The patent application includes technical drawings and a detailed description of your invention, thereby providing strong evidence of how to make and 2
use your invention. Filing the application and obtaining Patent Pending status can be important if a dispute arises as to who was the first inventor of the idea. To avoid losing your rights, patent applications must be filed in a timely manner. Should You Apply for a Patent To take the next step and obtain Patent Pending status, you must file a patent application. You may want to consider filing one or more patent applications, as more fully described below, to pursue utility and/or design patent protection. Filing a Utility Patent Application In that previous patent documents show inventions having some, or all, of the features of your invention, we believe that patent protection will depend upon whether there are differences between your invention and what was previously known (the prior art ), and whether such differences are new and non-obvious functional improvements. Features of your invention or more specific information not previously disclosed to us may favorably affect the patentability of the invention. Even small improvements upon what is previously known may be patentable and may be the basis for commercial success. An international, a provisional or a non-provisional utility patent application (or applications) could be flied to pursue utility patent protection for the invention. A non-provisional utility and/or an international application, based on a provisional utility application, must be filed before the end of the year to maintain Patent Pending status, to initiate government review, and to proceed further toward obtaining a utility patent for the invention. By filing a provisional utility application, you can have up to 21 years of combined Patent Pending and patent protection. A U.S. patent provides protection for your invention in the U.S. only. Without foreign patent protection, anyone in a foreign country may make, use, or sell your invention outside the U.S. without having to pay any compensation. If you believe your invention has the potential to sell in markets abroad, you should consider an international (or Patent Cooperation Treaty (PCT) application and/or selected foreign patent applications. An international application could give you up to 2½ years to preserve your opportunity to pursue virtually worldwide protection for your invention. If the international application is filed within a year of the filing of the provisional or non-provisional utility application the 2½-year period will start from the first filed U.S. application. Therefore, unless there are special considerations, most inventors do not pursue the international application as their first step. The usual approach is to file non-provisional (or a provisional) U.S. utility application, 3
and to file the international or selected foreign applications within 1 year of the first filed U.S. application (claiming priority from the initial U.S. filing). Once the international application is filed, the invention will undergo an international search, and, if desired, an international examination, but will not be subject to review in the U.S. or other countries until the applicant elects to pursue such protection. You will be in the best possible position if you file a patent application and obtain Patent Pending status before any public disclosure of your idea occurs. You will lose the benefits of U.S. patent protection if your patent application is not filed in the U.S. within one year of: an offer of sale of a product incorporating your idea; public use of the invention except on an experimental basis; any publication disclosing the invention, by you or anyone else. In most foreign countries, valid patent rights will be impossible to obtain if the invention is publicly disclosed even one day before the filing of a patent application. If you do not file an application in a timely manner, you run a significant risk of losing your rights to patent protection, and consequently anyone would be able to make, use or sell your invention without having to compensate you. Additional Information The patent process is complicated. While we have sought to be thorough in conducting this preliminary search, such a search offers no guarantees. Subjective considerations are involved in ducting the search. Relevant prior patents may also be lost or misfiled in the millions of patent records maintained by the government, and records relating to non-published pending applications not available to anyone outside of the USPTO. A government patent examiner is assigned to review each submitted non-provisional utility or design application. The examiner s reviews are communicated in the form of office actions. The examiner will evaluate the claims on the basis of the patents and/or printed publications found in the Examiner s own independent search that may include patents not cited in our search. As you may know, the examiner does not usually allow the application at first review, taking the position the claimed invention is already known or is obvious to an individual of ordinary skill in the art of the invention. The examiner may also request that changes be made to the technical description and/or drawings. It should be understood that these office actions are a normal part of government review process and that you may or may not be awarded a patent for the invention, depending on these office actions and your willingness to pursue the application further. Nonetheless, most patents applied for get issued by successfully overcoming examiner s office actions by making amendments and/or legal arguments in writing and/or in a personal interview with the examiner. In some cases, however, the patent application is allowed without any office actions, and goes directly to becoming a patent upon paying some issuance fees. 4
Please do not hesitate to contact Bay Area IP with any questions. Best Regards, Patent Research Coordinator 5