Disclaimer:  The following material is informational and general in nature and not intended to be offered as legal advice.  To obtain legal advice an attorney should be consulted with the specific facts of your case.

Since June, 1995, a patent has a term of twenty (20) years from date of filing.  This may be adjusted if the period of patent prosecution is greater than three years (due to actions or non-actions by the USPTO), guaranteeing an effective period of at least seventeen (17) years.  Maintenance Fees are required to be paid three times during the life of the patent to keep it in effect, 3?, 7? and 11? years following the issue date.  The maintenance fees basically double with each subsequent payment.

Simply put, broader claims protect the inventive concept such that a modified version of the invention would still infringe the broad claim even though the modified version is not identical to a specific embodiment of the invention as shown in the specification.  Narrower claims generally contain more elements than broader claims and for an article to infringe a patent requires the infringing article to possess each claimed element.  Thus if someone copies an invention covered by a narrow claim only, the copied article need omit only one element in order to avoid infringement of the narrow claim.

Don’t panic- several options are available:

1. Abandon the idea;

2. Narrow the scope of the application by presenting claims that are narrower in scope than initially intended.  Sometimes narrower claims offer adequate protection.  The adequacy of claim breadth is often determined by marketing considerations;

3. “Design around” the problematic patent.  What this means is that, usually with the help of a patent attorney or patent agent, the inventor modifies the invention to avoid one or more potential aspects of the troublesome patent thereby staying outside the scope of that patent.  Designing around an existing patent (or other reference) sometimes unexpectedly results in a better invention than the original design.  One of the policies underlying the patent system is to stimulate new innovation and creativity.  By allowing only a limited, generally non-extendible, patent term, inventors are continually forced to create new ideas, often with the result of unexpected and superior ideas that would not have occurred without the duress of having to avoid an existing patent.

There is no restriction to protecting an invention with patent, trademark and/or copyright protection as applicable.  It is not possible, however, to protect the same invention by both patent and trade secret rights as the nature of the patent grant is to make the invention public with a limited period of exclusivity, while a trade secret potentially lasts forever by being kept secret.

It is not absolutely necessary to commission a search, but it’s often cheap insurance.  It is a proverb among patent attorneys to have clients tell us that they know an invention is clear of troublesome prior art because they haven’t seen the invention for sale.  The universe of prior art is enormous and one of the hardest things I ever have to do is tell a client that there is no chance of getting a patent because of previously unknown, very close prior art.  Having a search done before spending lots of money writing and filing a patent application greatly reduces this likelihood, but does not completely eliminate it.

No, however, there is such a thing as an international patent application.  It is called a PCT patent application, after the Patent Cooperation Treaty, to which the United States is a signatory.  A PCT patent application conveys the ability to file, usually within 30 or 31 months of the priority date, a national or regional phase patent application in any member nation or regional patent granting organization.  The PCT is administered by WIPO, the World Intellectual Property Organization, which is headquartered in Geneva, Switzerland and is part of the United Nations.  See the links page for further information on the PCT process.

It is therefore necessary for a patent owner to secure patent protection in every jurisdiction where rights need to be enforced.  This is an extremely expensive process and is usually made based on marketing considerations.

When you see the term “patent pending” marked on an article, all it means is that a patent application has been filed on the invention.  It offers no protection, just a warning that the inventor intends to protect the invention.  Further, patent pending can be applied to any kind of a patent application, utility, design or plant.

A provisional patent application is merely proof that an invention was made at least as of the day the provisional patent application was filed.  If a corresponding utility patent application is filed within one year of the provisional filing date, the utility patent application can claim the benefit of the earlier filing date of the provisional patent application to defeat a competitor’s later priority date.  A provisional patent application is never examined and will never, on its own, ripen into a patent grant giving rights.  Thus, the only time a provisional patent application will ever be seriously considered is during later litigation or in a priority contest.

I often advise clients not to file a provisional patent application for several reasons:

1. Provisional patent applications are often hastily written and filed, often before the invention is adequately developed.  This happens for a number of reasons, often because of marketing departments’ wishes to safely show a new product at an early date.  

2. If international patent protection is sought, either via individual countries, the Patent Cooperation Treaty or through regional patent granting organizations (e.g., the European Patent Office), those patent applications must be filed within one year of the earliest priority date.  A U.S. provisional patent application qualifies as establishing a priority date, and thus forces the VERY expensive foreign filing process at an earlier date.  Thus, my usual advice is to avoid filing a provisional patent application if there is any possible interest in pursuing international patent protection.

3. A provisional patent application is only good for the information it contains at the time of filing.  If the provisional application is hastily written, it may have little value at a later time.  Also, the section of the patent statutes dealing with the standards to which patent applications are to be written makes no distinction between provisional and utility applications, meaning that for any patent application to be valid, it must be written to prescribed standards.   Because this is the case, a properly written provisional patent application is likely to cost about as much as a utility patent application.

Yes, but unless you have experience working with patents you are not likely to get a good result.  It takes many years of study and working with experienced practitioners to gain the ability to understand what is required and why.  You cannot, however, represent anyone else.
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Richard C. Emery 
Intellectual Property Attorney
3564 Rollingview Dr Suite G
Whitebear Lake, MN 55110
(651) 704-0080
Fax (651) 704-0079