Category: US Patent Practice Tips

Tip#1: US Patent Practice Tips

Where to start?  With questions of course!

Getting a good patent depends both on what is in the patent application and also how it is written.  Getting the what right might be obvious, but getting the how right can save not only headaches, but huge amounts of time and money.  So this space, which over the coming months will be devoted to suggestions and strategies for US patenting, will sometimes be devoted to the what (e.g. patentability, invention disclosure, etc…) and sometimes to the how (e.g. USPTO formal requirements, initiatives, etc..).

But before we dive into the ‘whats’ and ‘hows’ of US patent practice, I’d like to ask other, even more basic, questions:

  1. Why do you want to get a US patent? What do you think you will gain from it? Will it help you to actively exclude others from your technology space so that you can proceed in the US market without competition? Will it help you to attract investment?More than just the importance of self-awareness, your goals (or your client’s) will also drive your decisions during application preparation and examination.
  1. Can your type of technology be patented in 2017? And do you care? It (still) cannot be said enough: Fewer types of technology are patent-eligible in the US today than were just a few years ago. So before you file a patent application in the US, it is well worth considering whether a patent is even possible.  But despite the difficult outlook for certain technologies such as medical diagnostics, software, and isolated biological materials, you or your client may not actually care about eligibility fights (see question #1).  If the value of a patent application is its pending status; or the creation of prior art to prevent others from registering their own patents in your area, then current patent eligibility challenges may not matter.

So do you still want a US patent? Then come along, and together we can hopefully answer the ‘what’ and ‘how’ questions, and make your patenting experience more successful, and less difficult.

Looking to the next tip: What do you mean I can’t patent my new app?!

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

US Practice Tip #2: Patent Eligibility: It all begins (and may end) here

Note: Our second tip in a series. To view previous articles please click here.

Patents are an invention of society . It goes like this: you have new technology, the public wants it, and to get you to tell us about it, society (through enacting laws) invented a time-limited monopoly that we call a patent! It sounds simple, except here’s the catch: because patents are society‘s invention, society gets to decide which inventions it wants and considers to be deserving of a patent. This is known as “patent-eligibility”.

In the US, the issue of eligibility has developed over the last few years into a critical problem for technologies in certain fields. But is this something you need to worry about?

That depends: Is your technology related to software (including mobile apps), business methods, isolated biological materials, or medical diagnostic methods? If the answer is “yes”, stay with me for a few more minutes; it might save you time, money, and years (not to mention tears) of frustration. Here are three basic tips:

Recognize that a problem exists. Your app may do fantastic things across our interconnected world. You may have discovered a new way to diagnose a disease that until now had been beyond detection. You might be saving lives with a newly-discovered and purified phytochemical. But none of these things will make an invention patent-eligible if it does not meet the USPTO’s standard, which cares nothing for hard work or elegant experimental design.

Talk to your US patent attorney – early! You know your invention better than anyone, but your patent attorney (or her US colleague) can help determine if your technology may have problems meeting the current US patent eligibility standards. These issues are best discussed before a patent application is written. It may be that there is no eligibility problem. It may be that there is a problem, but your patent attorney can describe and claim your invention in a way which will make all the difference. Or it may be that with a bit more time in Research and Development, your technology can gain the technical features it will need to meet the current US standards. But these are issues to discuss and consider early, not the day before you need to file a patent application. 

Be flexible. Be open to a range of IP strategies. Not ALL aspects of your technology may be US patent-eligible, but other not-so-obvious sides to your invention might be, and can still result in your receiving a valuable patent.

And lastly – don’t forget that patents are not the only types of IP relevant to your business! Trade secrets, trademarks and designs are all ways to gain market advantage and keep value for you and your investors.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

US Practice Tip #3: Make Sure You Own It! (or someone else will)

Note: Our third tip in a series. To view previous articles please click here.

Do you own your patent? It might seem obvious, but this is not a trivial question. And I know there are far more interesting things to think about (believe me – there are more interesting things to write about!), but like the fine print in a contract, the most boring thing can lead to big problems if you don’t pay attention to it.

Listen: I can write the best patent application in the world for you. I can help you obtain such broad claims that your competitors will be shut out from your technology space for years to come. But if you don’t actually own the patent, then none of that will be worth anything to you or your company.

So I’ll ask again: Do you own your patent?

Wait a minute, doesn’t a company already own its patents? After all, it paid for them in the first place!

This is the big difference between the US and many other countries. In many countries, an employee’s work-related inventions are the property of the employer by Law. But in the US, ownership always begins with the inventor, and so like any property, ownership in patents must be transferred from the inventor-employee to the employer.

So how can you make sure your company owns its patents?

With contracts of course! The two most common ways to ensure that your company owns its patents are (a) put it in your employment or service contracts; and (b) by Assignment. Preferably, you should do both, although there are many situations in which an employment or service contract is not feasible. In those situations, having an inventor sign an Assignment is essential.

Ownership by Employment or Service Contract

There are several benefits to mentioning IP in general, and patents in particular, in your employment or service contracts –regardless of whether the specific employees or service providers are full- or part-time, outside contractors or advisors, or even university professors, post-docs, or students. The biggest benefit is that an employment or service contract is an opportunity to clearly set the IP rules for your company: to define for employees what constitutes IP, when and where it is generated, and most importantly – who owns it and when the transfer of ownership occurs. By way of a carefully written employment or service contract, you can effectively acquire all IP that is generated under your roof, at the time of its creation.

Ownership by Assignment

For all the benefits of including an IP clause in an employment or service contract, every investor in, and buyer or potential licensee of your company and/or its IP, and particularly its patents, will still require that you show a specific chain of title from the inventor to prove your right to sell or license any patent in a specific invention. This is where an Assignment comes in.

Unlike an employment or service contract, an Assignment is often very specific. It will list both the name of the patent (e.g. its title) and its registration or application number. Having an Assignment removes all doubt that a specific patent is owned by the company, and that the company has all rights in the invention to which the patent relates. An added benefit is that at the USPTO, this is the easiest way to prove that your company is entitled to make decisions about a patent or patent application.

When should all this be done?

As soon as possible!

Employees and service providers come and go, so it’s best to get those signatures on employment or service contracts right at the start, and on any Assignment as soon as a patent or trademark application is filed, or even just before. And when an investor asks if you own your IP, you can say YES with confidence, and move on to more interesting things.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!