So you’ve brought something new and wonderful into this world. At first reading, you may think we’re referring to the magic of parenthood, but we’re actually talking about a different kind of creation (though you might consider it your “baby”). For some, it’s a formula or for others, it’s a design or even a whole new invention, the likes of which the world has never seen. Regardless, your hard work and research have finally paid off so give yourself a pat on the back. You’ve done all you’ve set out to do… now what? Well, to protect the intellectual property of your creation, you’ll need to patent it (if your invention isn’t patentable, there may be other IP protection available). Unfortunately, unlike the excitement that comes with inventing, the patenting process is a bit arduous. To help you out, here are some general time estimates for the patent process:

Disclaimer: Davison is not a law firm and does not provide patent services or other legal services. The information being presented is factual in nature and is not offered as, nor may it be taken as, legal advice. Any legal questions should be directed to a competent patent attorney or patent agent.

Step-by-Step: Navigating the Patent Process

Patent Process Step 1: Patent Searching (15 minutes to several weeks)

This first step involves searching for other patents, products or information in existence that may be similar to yours. While a search isn’t required to submit an application, it is an important step. This way, when you apply, you’ll be sure to avoid claiming features that already exist. You can do this yourself; however, if you’re not experienced at performing patent searches, you may want to work with a patent attorney/agent. If working with a patent attorney/agent, the time can vary depending on the case, but typically can be done in a manner of weeks.

Patent Process Step 2: What kind of patent?

This step involves simply making sure you’re aware of what type of patent to file for. This way you’re filling out the proper paperwork. There are three types of categories to consider:

Utility, Design, or Plant Patent?

a) Utility Patent: A utility patent may be granted to anyone who invents or discovers any new or useful process, machine, composition of matter, article of manufacture, or any new useful improvement thereof.

b) Design Patent: A design patent may be granted to anyone who invents a new, original, or ornamental design for an article of manufacture.

c) Plant Patent: A plant patent may be granted to anyone who discovers or invents and asexually reproduces any distinct and new variety of plant.

Patent Process Step 3: Drafting a Patent Application (Several weeks to several months)

Once you’ve done your research and figured out what type of patent you’ll be applying for, it’s time for the next step- apply! At this stage, you’ll be required to put together the patent application. If you complete an application yourself, the process would simply be as long as it takes you to form a draft without errors. But again, if you lack experience, a patent attorney/agent is strongly recommended. Similarly to the patent search stage, an attorney/agent could take anywhere between several weeks to several months complete the application. This depends on the type of patent, the volume of work, and information provided by the client. At the very least, you should have a patent attorney/agent review your work.

If your invention needs a Utility Patent, you’ll have to decide whether to file a Provisional or Non-provisional application.

a) Provisional: a quick, informal and less-expensive application process. This applicant is not examined by the USPTO and is only valid for a year. That time allows an applicant to seek funding or test the marketability of the invention before incurring the added expense of a non-provisional application.

b) Non-provisional: Only a non-provisional application can lead to the issuance of a patent. The process of filing one is a lot longer and more expensive than a Provisional form.

Patent Process Step 4: File to Acceptance (7 months to 23.9 months)

At this point, your patent will have a ‘Patent Pending’ status. Don’t get too excited when you see 7 months up there, though. Typically the only cases where a patent is approved within a 7 month period is if it’s what’s called a Track One, which just means it’s prioritized. This can only apply to plant or utility applications and has different requirements, including a much larger fee than a normal non-provisional patent application.

Per the USPTO, the current estimated time for review from a Patent Examiner (or First Office Action) is 15.7 months (or 1.7 months for Track One) and the average wait to actually get a final determination (notice of allowance or final rejection) is 23.9 months. A provisional application is not examined and gives the applicant one year from that date to file for a non-provisional patent.

The non-provisional patent application process is lengthy because, at any given time, the USPTO has hundreds of thousands of patent applications to process. For example, in 2015, 629,647 applications were filed. Compare this to the mere 7,966 Patent Examiners working as of 2014.

We know this process can be overwhelming for some, and, for anyone feeling a little out of their depth, a patent attorney/agent can be very helpful. Our patent attorney, David DeMay, empathizes with those who get overwhelmed with the process, stating, “It certainly can be overwhelming, particularly if you are unfamiliar with government bureaucracy. There are numerous federal statutes and regulations that need to be followed and failing to follow proper procedure can have negative effects on the individual’s rights. That is why the USPTO requires every patent attorney/agent to pass the Patent Bar Exam before they are permitted to represent another individual in patent matters.”

Overall, there’s no one size fits all timeline for the patent process. It’s kind of like ordering from your favorite Etsy shop, the delivery timeline is just a rough estimate. Sometimes you’re pleasantly surprised, and other times you’re left waiting longer than you bargained for. The keys to getting through the process are to take your time, be detailed/thorough, and most of all – be patient. If you’re able to do all of this then, eventually, your invention or creation will legally be yours.

How do you feel after learning about those simple four steps to get a patent? Do you know what kind of patent would work for your idea? Are you ready to research your idea?

Click HERE to connect with a Davison invention team member.

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A Roman judge in Alexandria, Vitruvius, tried and found multiple poets guilty of stealing poems. The theft was revealed during a literary contest. Similar cases in first century Rome include literacy piracy. Despite the importance of these events, there is no known law from ancient Rome regarding intellectual property theft.

Earliest Patent Systems

The first real patent system wouldn’t be enacted until centuries later. The Venetian Act of 1474 streamlined the patenting process and made them easier to apply for. Until then, Europe had the concept of patents, but there were no set standards. They were issued on an individual basis upon request. The Act meant the patent had to be for something one-of-a-kind and useful. This remains the standard for patent applications around the world to this day, including in the United States.

That’s not to say that there weren’t any forms of intellectual property protection throughout Medieval times, but they were less structured than formal patents. In larger cities, guilds would be formed to protect the knowledge of certain crafts. As only guild members could learn the craft, such as glassmaking, this raised the commercial value of the products in the region. Venetian glassmakers were highly regulated, with everything from working days to ingredients monitored closely. It nearly created a monopoly in the glass industry. While featuring the same protective features of patents, these were all self-contained and had no influence from the government.

Queen Elizabeth I and Patents

Queen Elizabeth made many changes to how patents worked in England during her reign. Early on, she sent letters encouraging other countries to bring their manufacturing technology and new products to England. At first, it worked, bringing in foreigners and helping her country grow in multiple industries. As years passed, however, she used her same policies to issue patents on everything, including long-established trade and techniques. This resulted in Parliament attempting to legislate against monopolies- something Elizabeth was able to pacify them from doing.

King James Changes the Rules

With a change in ruler came a change in the power of patents. In 1624, King James I made a royal proclamation that abolished the Brehon Laws and introduced English common law instead. Once incorporated into the Statute of Monopolies 1623, it limited the power a monarch would have regarding patents. Under the new law, patents could only be given to inventors of an original creation during a certain window of time. While it caused some upset and didn’t fully end patent abuse, it is still notable for creating a fairer system.

US Patents

The history of the United States and patent law is as equally turbulen as Europe’s. The first US Patent Act only lasted three years, from 1790 to 1793. It was then quickly replaced with a new Patent Act which functioned on an examination system. This further prevented abuse by having the product examined before the patent was issued. While the modern American patent system doesn’t quite resemble that from 1790, the standard for applying for a patent is more or less the same.

A third Patent Act was passed in 1836, to combat problems created by the previous two. It marked the creation of the Patent Office. The Secretary of State was no longer responsible for issuing patents, although the task still fell within the jurisdiction of the Department of the State. The new act also required that patent information be accessible in public libraries, thus preventing repeat patents. The addition of a seven-year extension to the existing fourteen-year patent was introduced as well. Additionally, immigrants could now apply for patents in the United States. It also raised the standards for American patents.

Patent Law Criticism

Every change has its critics- especially in England, where free trade economics reigned supreme. Patent law began to be criticized in the 1850s, believing it hindered research and served little good to the general public. Adrian Johns, a modern patent historian, summarizes the main complaints from the public in his book Piracy:

“[Patents] projected an artificial idol of the single inventor, radically denigrated the role of the intellectual commons, and blocked a path to this commons for other citizens — citizens who were all, on this account, potential inventors too. […] Patentees were the equivalent of squatters on public land — or better, of uncouth market traders who planted their barrows in the middle of the highway and barred the way of the people.”

The Depression of 1890 did not help matters in America. In an already strained economy, patents seemed to be promoting monopolies. Courts attempted to invalidate patents and the government had to intervene. President Benjamin Harrison introduced the Sherman Antitrust Act, which prohibited agreements and conduct that would attempt to monopolize a market. It should be noted, however, that this was to combat artificial monopoly through restricting trade and inflating prices. “Innocent monopoly,” or a monopoly achieved on pure merit, remained legal under the new system.

Patents in the 20th Century

Before we return to worldwide patent law, a quick recap of the last century or so of American laws will bring us up to date. In 1952, a new Patent Act was issued. The amendment required the inventor to not only describe their creation but also how it could be infringed upon. It also dictated all patents should be for “non-obvious” inventions- i.e., not for the steering wheel of a car or a spring in a Slinky. As the atmosphere grew more pro-patent, Congress created the Court of Appeals for the Federal Circuit to hear all appeals regarding patents beginning in 1982. 2011 saw the switch from “first to invent” to “first inventor to file” after the Leahy-Smith America Invents Act.

1980 saw the change to patents on a global scale, all thanks to one case. A microbiologist for General Electric, Anand Chakrabarty, filed an application to patent a bacterium he genetically engineered to break down crude oil. At the time, no one had attempted to patent a living organism. The patent was rejected, but the United States Court of Customs and Patent Appeals overturned the USPTS decision and held that the patent should be issued. The case was taken to the Supreme Court, and Chief Justice Warren Burger wrote the majority opinion that the bacteria could be patented. Craig Nard, director of the Intellectual Property Center at Ohio’s Case Western Reserve University, cites this as jumpstarting the biotech industry.

Backtracking a bit, many countries, particularly those in the British Empire like India and New Zealand, followed British patent laws until the 1850s. TUnder British rule, citizens from these nations were at a disadvantage when it came to patents. Once the countries gained their freedom, however, they swiftly abolished the old English laws and established their own systems. Many of them still closely resemble European systems and have their own share of reforms and addendums. Still, it gave them a chance to share their inventions globally without fear of theft. New Zealand was actually among the top 5 patent offices in 2006.

Present Day Patent Laws

Finally, we reach the present day. While America is still among the world’s largest patent offices, it was rapidly outpaced by China. Of the approximate 1.98 million patent applications filed in 2012, 526,412 were filed in China. The United States was in a close second with 503,582 patents filed. Thomson Reuters researchers predicted China would outpace the USA in 2005, and the prediction was brought to life. (For the record, the other three offices belong in Europe as a whole, Japan, and South Korea.)

Patents play a large part in encouraging creativity and innovation in the world. Because each patent must be unique and “non-obvious,” it encourages inventors to think outside usual limits and create something truly original. But constant change through new laws and amendments impact both inventors and consumers and require adjustment in the approach to patenting.  Patents remain a complicated piece of the already massive jigsaw puzzle that is the world of inventing and innovation.

(SIDEBAR ON CAVEATS: Patent caveats were briefly available in the United States. Like traditional patents, it described an illustration or invention but did not have the full examination into the patentable subject manner and patent claims. It was merely a notice on the intention of filing for a proper patent, expiring after one year. Provisional applications today are somewhat similar but have significant differences. Caveats could be issued between 1836 and 1909, before being abolished by the US government.)

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On October 1, we wrote a blog about patent trolls, otherwise known as NPEs (Non-practicing entities), which are companies that don’t make or sell anything; they solely own patents.

In an effort to thwart these patent trolls from buying patents for the sole purpose of frivolous lawsuits against unsuspecting businesses, the House Judiciary Committee Chairman, Rep. Bob Goodlatte (R-VA), introduced The Innovation Act of 2013, which is co-sponsored by the bipartisan coalition, in order to stop patent trolls.

This new act offers a multitude of proposed solutions to the ongoing problem of patent trolls. For those who crave innovation, if the patent trolls are not stopped in their tracks, they will continue to leave a sour taste in your mouth, because of their exploitation of the innovation economy.

Since 2005, there has been a 400 percent increase of lawsuits by patents trolls. In 2011, these reported costs were $29 billion that went towards stifling innovation. Patent trolls don’t just target small businesses; some are courageous enough to go after large companies and even city governments.

At Davison, we want to inform you about these patent trolls and how legislation is working to protect your right to innovate.

We encourage you to learn more about The Innovation Act of 2013 and how this bill can help stop the progress of patent trolls.

Copyright Davison 2013

Sources:

http://www.ibtimes.com/innovation-act-2013-bipartisan-bill-fight-patent-trolls-introduced-congress-1439942

https://action.eff.org/o/9042/p/dia/action3/common/public/?action_KEY=9416

Images:

http://nyobetabeat.files.wordpress.com/2011/11/patenttrolls_final_david_saracino.jpg

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“Technically, there is no such thing as a ‘provisional patent.’ The patent law provides for a ‘provisional application,’ which isn’t subject to some of the formal requirements for a regular patent application. A provisional application, however, is not intended to, itself, provide any enforceable rights,” says Michael Lechter — a practicing attorney and the author of “Protecting Your #1 Asset, Creating Fortunes from Your Ideas, An Intellectual Property Handbook” — in his Inc. column online.

A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed, according to the USPTO. The 12-month pendency period cannot be extended.Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

A provisional application, which may not be filed for design inventions, allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art: in most systems of patent law, prior art constitutes all information that has been made available to the public in any form.) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description of the invention.

Lechter cautions:

— A provisional application is not examined by the Patent and Trademark Office (PTO) and is automatically abandoned 12 months after filing.

— It does not itself ever mature into a patent. For a patent to issue on the subject matter described in the provisional, a regular application claiming priority on the provisional application must be filed within a year of the provisional.

— A PPA costs $125 ($250 for a large company).

— There are reasons why you might want to file a provisional application, but saving money is not one of them. While you can delay a portion of the expense of preparing a regular application (the cost of preparing a full set of claims), the only time that you save money by filing a provisional application is if you ultimately decide not to pursue patent protection before you file the corresponding regular application.

So what have we learned? A provisional patent application is not a patent, but a document that allows for an early effective filing date in a later filed non-provisional patent application and let’s the creator use the term “Patent Pending” in relation to the product. You will still need to file a corresponding non-provisional application before the 12-month pendency of your provisional application expires, as a provisional application will not mature into a patent filing. A provisional patent application is only a part of the process, so even though it’s a cheaper and faster way to get your idea in the office, you will still need a non-provisional patent if you continue to pursue your idea.

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