"How do I protect my invention from being produce in other countries?" is one of the most common questions I get from inventors considering filing a US patent application. The intent of this post is to provide a short and practical answer to this very complex question of international law.
The problem is that a patent only provides protection in the issuing country and accordingly, a United States Patent protects your invention only in the United States. To get patent protection in any foreign country, you have to file a patent application in that county.
However, your US patent attorney can at least secure a filing date that is recognized in most foreign countries. When a United States patent application is filed, the U.S. Patent Office issues a Foreign Filing License. The license specifies a "priority date" and foreign patents must be filed within one year of the priority date, or the priority date is lost. In order to file these foreign patent applications an inventor must hire counsel in the country in which he/she would like to file and work with that attorney through the foreign patent prosecution process.
However, the one year window can be extended to thirty (30) months, or even longer in some cases, if your US attorney files an application under the Patent Cooperation Treaty (PCT). This involves having your US patent application sent to the international patent repository in Switzerland for an international patent search. Once the international search is performed, your US patent application and the international search results can be forwarded from the international patent repository to any country that is a party to the Treaty. Once the transfer occurs your application can be prosecuted by local counsel within the designated country.
Wednesday, December 16, 2009
Friday, December 11, 2009
Email Disclaimers
Have ever thought of developing a disclaimer statement for your company's outgoing email messages? I recommend that companies consider developing an out going email disclaimer that addresses the potential liability that may attach to misdirected or altered electronic messages.
Companies should also consider whether they want to include additional language to disclaim the provisions of the Uniform Electronic Transactions Act ("UETA"), MCL 450.385 et seq. The UETA allows parties to form contracts electronically as opposed to requiring that documents bear original signatures. In many cases, the contractually binding effect the UETA gives to electronic documents is very convenient. However, there may be occasions where a company might want to limit the contracting authority of its personnel by requiring that all contracts be signed by conventional, rather than electronic means. To this end, the UETA allows parties to disclaim the contractually binding effect of its electronic transmissions. MCL 450.835(2).
Companies should also be aware of the Unsolicited Commercial Email Protection Act, MCL 445.2501 et seq. This Act requires that certain information must be provided in any transmission of unsolicited email pertaining to the exchange of goods or services. MCL 445.2502. Unsolicited sales emails sent to recipients with whom the company has a preexisting business relationship are not regulated by the Act. If your company is sending emails that could fall under the category of unsolicited commercial email, those emails must contain language that identifies the source and recipient of the email and provides a convenient way for the recipient to opt out of receiving future unsolicited commercial email messages. MCL 445.2504. Failure to conform with this requirement may result in both civil liability and criminal penalties for each non-conforming email that is sent. MCL 445.2508; MCL 445.2507.
If you would like further information on a specific email disclaimer that might work for your company feel free to contact me.
Companies should also consider whether they want to include additional language to disclaim the provisions of the Uniform Electronic Transactions Act ("UETA"), MCL 450.385 et seq. The UETA allows parties to form contracts electronically as opposed to requiring that documents bear original signatures. In many cases, the contractually binding effect the UETA gives to electronic documents is very convenient. However, there may be occasions where a company might want to limit the contracting authority of its personnel by requiring that all contracts be signed by conventional, rather than electronic means. To this end, the UETA allows parties to disclaim the contractually binding effect of its electronic transmissions. MCL 450.835(2).
Companies should also be aware of the Unsolicited Commercial Email Protection Act, MCL 445.2501 et seq. This Act requires that certain information must be provided in any transmission of unsolicited email pertaining to the exchange of goods or services. MCL 445.2502. Unsolicited sales emails sent to recipients with whom the company has a preexisting business relationship are not regulated by the Act. If your company is sending emails that could fall under the category of unsolicited commercial email, those emails must contain language that identifies the source and recipient of the email and provides a convenient way for the recipient to opt out of receiving future unsolicited commercial email messages. MCL 445.2504. Failure to conform with this requirement may result in both civil liability and criminal penalties for each non-conforming email that is sent. MCL 445.2508; MCL 445.2507.
If you would like further information on a specific email disclaimer that might work for your company feel free to contact me.
Thursday, December 10, 2009
The Statutory Bars
A couple of posts ago I wrote that an artical directed at software companies that may want to file patents. That post talked a bit about the so called "statutory bars" to patentability. These statutory bars are applicable to more than just software patents. Therefore, this post is designed to set out a bit more information about the statutory bars in a more general way.
A valid patent may not be obtained if for more than one year prior to the filing of a patent application, your invention has (1) been "in public use," or (2) has been "published" in some manner which allows a public viewing of it, or (3) has been "offered for sale" in this country.
Your own use and sale of the invention for more than a year before your application is filed will "bar" your right to obtain a patent just as effectively as though this use and sale had been done by someone else. In today's world it is important to remember that "publication" or an "offer for sale" can occur via the internet. Additionally, any sale, publication, or disclosure of the invention prior to the filing of a United States patent application will destroy the possibility of obtaining foreign patent protection in most foreign countries.
The U.S. Patent Office does recognize an "experimental use" exception to this rule, which prevents the one year clock from running if it can be shown that a public display or use was part of an ongoing experiment to test and improve the invention. However, praticially speaking, proving "experimental use" is a chore and therefore an inventor should try to not to rely on it in order to minimize costs.
A valid patent may not be obtained if for more than one year prior to the filing of a patent application, your invention has (1) been "in public use," or (2) has been "published" in some manner which allows a public viewing of it, or (3) has been "offered for sale" in this country.
Your own use and sale of the invention for more than a year before your application is filed will "bar" your right to obtain a patent just as effectively as though this use and sale had been done by someone else. In today's world it is important to remember that "publication" or an "offer for sale" can occur via the internet. Additionally, any sale, publication, or disclosure of the invention prior to the filing of a United States patent application will destroy the possibility of obtaining foreign patent protection in most foreign countries.
The U.S. Patent Office does recognize an "experimental use" exception to this rule, which prevents the one year clock from running if it can be shown that a public display or use was part of an ongoing experiment to test and improve the invention. However, praticially speaking, proving "experimental use" is a chore and therefore an inventor should try to not to rely on it in order to minimize costs.
Wednesday, December 9, 2009
The Three Types of Patent Protection
Currently, there are three types of United States patents: utility, design, and plant.
A utility patent protects the "structural and functional" aspects of an invention such as, what it is made from, how it operates, or how it is used. By law, a utility patent can be issued to any person who invents a new, useful, and nonobvious (1) process, (2) machine, (3) manufactured article, (4) composition of matter, or (5) any new and useful improvement to any of these types of inventions. "Process" means any process or method. "Manufacture" refers to articles that are made. "Composition of matter" relates to chemical compositions and may include mixtures of food ingredients and recipes, as well as new chemical compounds.
A design patent protects a new, original and ornamental design of an article of manufacture. Structural and functional aspects of an invention are not included in a design patent.
A plant patent is granted to any person who has invented or discovered, and asexually reproduced any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
In many cases, it is better to pursue utility patent protection since protecting the function and structure of an invention is preferable over protecting the appearance. Nevertheless, when utility patent protection may not be available, or the appearance of an invention is more important than its function, design patent protection may be the best choice. There are also those situations where it may be appropriate to seek both utility and design patents for an invention. The inventor may believe both "function" and "appearance" are important, and when this occurs, the inventor may choose to file both design and utility patent applications for the same invention.
A utility patent protects the "structural and functional" aspects of an invention such as, what it is made from, how it operates, or how it is used. By law, a utility patent can be issued to any person who invents a new, useful, and nonobvious (1) process, (2) machine, (3) manufactured article, (4) composition of matter, or (5) any new and useful improvement to any of these types of inventions. "Process" means any process or method. "Manufacture" refers to articles that are made. "Composition of matter" relates to chemical compositions and may include mixtures of food ingredients and recipes, as well as new chemical compounds.
A design patent protects a new, original and ornamental design of an article of manufacture. Structural and functional aspects of an invention are not included in a design patent.
A plant patent is granted to any person who has invented or discovered, and asexually reproduced any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
In many cases, it is better to pursue utility patent protection since protecting the function and structure of an invention is preferable over protecting the appearance. Nevertheless, when utility patent protection may not be available, or the appearance of an invention is more important than its function, design patent protection may be the best choice. There are also those situations where it may be appropriate to seek both utility and design patents for an invention. The inventor may believe both "function" and "appearance" are important, and when this occurs, the inventor may choose to file both design and utility patent applications for the same invention.
Tuesday, December 8, 2009
A Brief Description of the Patent Process
I find alot of inventors that know that they need to protect their invention by filing a patent, but have not idea what steps the patent process entails. Therefore, I have prepared this short summaryto provide inventors with some basic information about the various steps in the patent process.
The patent process consists of the following stages:
1. Patentability Search
Normally your attorney will perform an U.S. Patent and Trademark Office (“USPTO”) database search of patents and published patent applications for so called "prior art that may be relevant to the patentability of your invention. Typically, a report provided to the client along with an opinion as to patentability. The client then decides based on the information found in the search whether to proceed with a patent application.
2. Preparation of the Application and Filing
Typically, the inventor and the attorney will have a face-to-face meeting where the client explains the invention and its function in detail. The information conveyed to the attorney is then used to write the application. Further, the client should provide rough drawings or a prototype of the invention that will be provided to the draftsperson for preparation of the patent drawings. The more detailed information about the invention (in writing and by way of figures) the patent attorney receives from the client, the more economical, cost-effective and efficient the preparation process will be.
3. Prosecution
After filing of an application, the prosecution phase begins. It typically takes 9 to 18 months before a response to the application is received from the USPTO. This phase is unpredictable and may consist of several written exchanges or telephone conferences with the Examiner. This phase can last six months to a year for simple technologies, or span several years for complex applications.
4. Maintenance
After a patent issues, maintenance fees are due the USPTO at 3.5 years, 7.5 years, and 11.5 years from the date of issue. We docket these dates and send reminders to the client, as well as provide assistance to our clients if they so desire.
The patent process consists of the following stages:
1. Patentability Search
Normally your attorney will perform an U.S. Patent and Trademark Office (“USPTO”) database search of patents and published patent applications for so called "prior art that may be relevant to the patentability of your invention. Typically, a report provided to the client along with an opinion as to patentability. The client then decides based on the information found in the search whether to proceed with a patent application.
2. Preparation of the Application and Filing
Typically, the inventor and the attorney will have a face-to-face meeting where the client explains the invention and its function in detail. The information conveyed to the attorney is then used to write the application. Further, the client should provide rough drawings or a prototype of the invention that will be provided to the draftsperson for preparation of the patent drawings. The more detailed information about the invention (in writing and by way of figures) the patent attorney receives from the client, the more economical, cost-effective and efficient the preparation process will be.
3. Prosecution
After filing of an application, the prosecution phase begins. It typically takes 9 to 18 months before a response to the application is received from the USPTO. This phase is unpredictable and may consist of several written exchanges or telephone conferences with the Examiner. This phase can last six months to a year for simple technologies, or span several years for complex applications.
4. Maintenance
After a patent issues, maintenance fees are due the USPTO at 3.5 years, 7.5 years, and 11.5 years from the date of issue. We docket these dates and send reminders to the client, as well as provide assistance to our clients if they so desire.
Monday, December 7, 2009
What Software Companies Should Know About Patents
Recently, I have had the pleasure of representing companies that have developed interesting software products. Through these representations, it has occurred to me that many software companies do not know the ins and outs of the patent process or whether their software can even be patented. Therefore, I am writing this article to convey five things that every software company ought to know about their availability of patent protection and the steps that their companies should take to make sure their inventions are protected.
1. Software Is Patentable.
Although this has not historically been the case, it has been over 10 years since the patent office started to allow software companies to file patents on their software inventions.
2. The Difference between Patents and Copyrights.
Software companies also need to understand the difference between patent and copyright protection. Copyright law protects the software program source code from being duplicated by another party. This duplication has to be a direct copying or the creation of a derivate work based on the original code. Due to the limitations on copyright protection, in many cases where a software program is more than a mere database and has a function, patent protection is needed to truly protect a piece of software from being copied. If programmers rely solely on copyright law, a competitor can merely right a new program that performs the same function.
3. Beware of the Statutory Bars.
Once your company has a good understanding as to the advantages of patenting software, the next step is to understand the time limitations involved in the patent process. Generally, an invention can only be patented if a patent application is filed within one year of the inventions first publication, public use, or offer for sale. This may seem like a long time; however, if an inventor is not diligent these time limitations can really sneak up on you. For example, say your company has a new project and announces it on the company's website. Such an announcement could be construed by the Patent office as a publication of the invention. This may be true even if your company has not yet prepared to file a patent application. Therefore, it's important to recognize very early in the development process whether your company would like to pursue patent protection so that you do not publish, publically use, or offer for sale the invention before consulting your patent attorney.
4. Best Practices.
If your company routinely designs software, it is a good idea to put together an invention disclosure program so that your employees inform management of any new developments as they are invented. This early disclosure of the invention affords management some time to decide whether to incur the cost of the patent process while the program is still being designed and perfected. An invention disclosure program is normally articulated in the company's employee handbook. These handbook provisions include a uniform invention disclosure form which the employee will be directed to fill out, and written procedures explaining when and how to provide the completed forms to management. Many large companies actually connect a financial incentive for completing and turning in these invention disclosure forms. Small companies, however, may be intimate enough that inventions do not slip through the cracks and thus such a program may not be needed.
5. Nondisclosure Agreements.
If your company has an invention but lacks the expertise to commercialize on its own, it's likely that you may be hiring outside consultants to finish testing or designing your company's invention. It's very important that any disclosure of your invention to a third party consultant is done only under the terms of a nondisclosure agreement. Such agreements contractually bind the third party to keep your invention confidential so as not to invoke any of the statutory bars. The contracts also insure that your consultants are not tempted to steal your idea before you have had time to get your patent issue, or disclose the invention to third parties who may steal your invention.
1. Software Is Patentable.
Although this has not historically been the case, it has been over 10 years since the patent office started to allow software companies to file patents on their software inventions.
2. The Difference between Patents and Copyrights.
Software companies also need to understand the difference between patent and copyright protection. Copyright law protects the software program source code from being duplicated by another party. This duplication has to be a direct copying or the creation of a derivate work based on the original code. Due to the limitations on copyright protection, in many cases where a software program is more than a mere database and has a function, patent protection is needed to truly protect a piece of software from being copied. If programmers rely solely on copyright law, a competitor can merely right a new program that performs the same function.
3. Beware of the Statutory Bars.
Once your company has a good understanding as to the advantages of patenting software, the next step is to understand the time limitations involved in the patent process. Generally, an invention can only be patented if a patent application is filed within one year of the inventions first publication, public use, or offer for sale. This may seem like a long time; however, if an inventor is not diligent these time limitations can really sneak up on you. For example, say your company has a new project and announces it on the company's website. Such an announcement could be construed by the Patent office as a publication of the invention. This may be true even if your company has not yet prepared to file a patent application. Therefore, it's important to recognize very early in the development process whether your company would like to pursue patent protection so that you do not publish, publically use, or offer for sale the invention before consulting your patent attorney.
4. Best Practices.
If your company routinely designs software, it is a good idea to put together an invention disclosure program so that your employees inform management of any new developments as they are invented. This early disclosure of the invention affords management some time to decide whether to incur the cost of the patent process while the program is still being designed and perfected. An invention disclosure program is normally articulated in the company's employee handbook. These handbook provisions include a uniform invention disclosure form which the employee will be directed to fill out, and written procedures explaining when and how to provide the completed forms to management. Many large companies actually connect a financial incentive for completing and turning in these invention disclosure forms. Small companies, however, may be intimate enough that inventions do not slip through the cracks and thus such a program may not be needed.
5. Nondisclosure Agreements.
If your company has an invention but lacks the expertise to commercialize on its own, it's likely that you may be hiring outside consultants to finish testing or designing your company's invention. It's very important that any disclosure of your invention to a third party consultant is done only under the terms of a nondisclosure agreement. Such agreements contractually bind the third party to keep your invention confidential so as not to invoke any of the statutory bars. The contracts also insure that your consultants are not tempted to steal your idea before you have had time to get your patent issue, or disclose the invention to third parties who may steal your invention.
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