Obtaining a Design Patent

August 12, 2010 By Law Library Leave a Comment

A design patent is generally reserved for what can be considered an enhancement on an existing material, product, or device that drastically improves or changes the item for useful purposes. Obtaining a patent for design features through the U.S. Patent Office is typically done via a patent lawyer and must meet a strict standard of criteria before a design patent will be considered.


The U.S. Patent Office handles a large amount of design patent applications, as it is usually easier to come up with a novel, realistically usable, and functional design. Applying for a design patent through the U.S. Patent Office is much easier than applying for a utility patent.


This is based on the ease of paperwork associated with a design patent versus a utility patent. However, it is still recommended that a patent lawyer is used in order to be assured that the required paperwork and patent infringement issues are well handled before the application is submitted to the U.S. Patent Office.


The U.S. Patent Office is more likely to review your patent application if it has been filed on your behalf by a patent lawyer. Patent lawyers are preferred to patent agent by the U.S. Patent Office in regards to patent applications for all types of patents. While it is not absolutely necessary to use a patent lawyer for the filing of a patent application, it is typically the preference of the U.S. Patent Office, as the issues related to patent infringement are determined to be specifically covered when dealing with a patent lawyer.


Patent lawyers have seen an influx of design patent applications concerning computer programming designs and internet enhancements. They have also seen a higher incidence of patent infringement as they relate to these designs. When hiring a patent lawyer, request having a patent search performed in order to adequately avoid issues of patent infringement.


Having done this, you are much less likely to encounter any patent infringement of your own doing and then will be more certain that your design patent application is more likely to be granted. Considering the costs associated with obtaining a design patent, it is highly recommended that your patent lawyer is capable of performing adequate research and being cautious of patent infringement issues.


Patent infringement as it applies to design patents can be frustrating, especially in the computer and technology patent applications. This is because most inventors are determined to earn their bread and butter by creating a new “must have” design feature that will either enhance the internet or create a program that will make computer use easier.


With too many intellectuals brewing up ideas, too many similar or nearly identical ideas are passing in front of the U.S. Patent Office’s review committees. Once again, hiring a competent patent lawyer can help avoid this mess as well as save time and money in the process. A patent lawyer is likely to be able to identify trouble spots before your application is sent to the U.S Patent Office and then the idea can either be reworked, or abandoned entirely while another good idea is thought up.


As disappointing as it may be to hear that there is already a patent pending when you were sure that you had a great idea, it is better to be informed by your patent lawyer before high fees have been paid than it is to find out 18 months later that a patent was already issued for the same idea.


If you went ahead and began marketing your patent pending enhancement, you are now in violation of patent infringement laws and may have fines and court costs which could very well find you in the next several months. Precautions are always taken by the U.S. Patent Office to avoid this scenario, but the possibility exists.


A design patent still requires impeccable paper work, just not nearly as much of it. For the perfection the U.S. Patent Office likes to see, a patent lawyer is definitely the way to go. This way, you can be assured that you are presenting a very professional and acceptable patent idea to the U.S. Patent Office.


Once you have been granted a design patent, or have been notified of your patent pending number, you can then begin the marketing process in order to reap the rewards of your well laid enhancement or invention without significant fear of being in violation of patent infringement laws. This is what you have worked diligently for, so naturally, you will want to celebrate your success when your patent approval finally arrives.

Filed Under Patents Tagged With Design, Obtaining, Patent

patent trademark copyright

August 1, 2010 By Law Library Leave a Comment

You’re a small business owner with a hot new product or service and you’re deciding what to name it. Perhaps you’ve even hired a graphic designer to create a flashy logo to go with it. You may have ruled out trademark registration as too expensive or even unnecessary because you only plan to sell in your local area. This article will show why nearly every business can benefit from trademark protection, and how a new option makes professional trademark assistance affordable for most small businesses and entrepreneurs. There are two excellent reasons to protect a trademark as soon as possible, even for small businesses that operate in a limited area. The first is that a professionally prepared trademark conflict search will help you identify existing trademarks to avoid infringement. Discovering a conflict ahead of your launch will allow you to change names before investing in promotional materials and advertising, and building recognition of a name you may have to change later. The last thing your new business or project needs is a lawsuit during the startup stage. On the plus side, discovering a conflict may offer an opportunity to create a new name that distinguishes you from existing ?brands? and projects your unique value proposition. Speaking of branding opportunities, the second reason to protect your trademark even if you operate in a limited area is to prepare for nationwide expansion of your business. With the shift toward online marketing and commerce, even the smallest businesses are finding larger markets to expand into. Also, registering the mark with the U. S. Patent and Trademark Office gives public notice of your trademark rights, protects the mark nationwide, and discourages infringement with heavier penalties. Now that we know it’s important to protect trademarks, let’s examine a new option for professional trademark assistance at significant savings over the traditional law firm fees. A new breed of firms called Trademark Service Providers specialize in trademark research and related services, offering them to small businesses and entrepreneurs without the typical legal fees. While they do not represent clients in court or provide legal advice, they can perform the specialized research necessary to check for conflicts. Some firms also prepare trademark applications and provide ongoing infringement searches. A few providers even offer creative naming services to help clients with the naming process. In order to appreciate the benefits of using these new services, let’s continue with the scenario from earlier. You have selected a name and you are weighing your trademark options. You may have read an article on trademarks that suggested you conduct a ?free? online trademark search. Let’s briefly examine online conflict searches. Two of the most popular free trademark searches are the online records of the U.S. Patent and Trademark Office (www.uspto.gov), and a simple name search using Internet search engines. Unfortunately, these searches can be misleading to those who are new to the subject of trademarks. As we will examine below, these searches are only the first stage of an effective search process. They may uncover obvious conflicts, but as you will see below, they do not reliably answer the question of trademark availability. The same can be said for State trademark registrations and searches. In fact, only a fraction of the trademarks in use are registered with the State and Federal agencies. The remaining marks are unregistered, often referred to as ?common law? trademarks. Common law trademarks are unregistered marks used in business or commerce that receive limited legal protection based on the geographical area where they are used. The absence of a centralized registry documenting these marks complicates the process of conducting a conflict and availability search. Locating common law marks requires an experienced researcher using the latest and most extensive sources, searching literally millions of relevant business and legal records. This is where a Trademark Service Provider can help. A Trademark Service Provider has access to proprietary search resources with the most current and extensive information, advanced search technology, and the expertise necessary to conduct a diligent and comprehensive conflict search. Due to the existence of common law trademarks, no search results are 100% conclusive. However, the best strategy is to obtain the most thorough search and then begin using and protecting a mark as soon as possible. If you plan to use a particular trademark but your business has not opened yet, you can file an ?intent to use? application to protect it for six months during the development stage. For an additional fee you can extend this period up to two years if necessary. Trademark Service Providers are part of a growing trend of out-sourced expertise designed for small businesses. In contrast to the more expensive ?one size fits all? approach used by big national firms, or the risky alternative of going it alone, a firm that specializes in serving small business owners can be the perfect solution. They offer reasonably priced yet professional-grade services, a capable staff that supports your vision, and the expertise that allows you return to your primary goal of building your dream business. Before you know it, your small business will be creating a Big Name reputation, with the confidence that your trademarks are protected.

Filed Under Trademarks Tagged With Copyright, Patent, Trademark

Corporate Law Services – Trademark, Patent, New Company Registration

August 1, 2010 By Law Library Leave a Comment

In this corporate world you can find number of law firms in different sections of the globe that are offering verities of business / company law services with complete guidance and assistance. Services like company trademark registration, trademark copyright, PCT filling in India, pct filing, patent trademark attorney, ipr law firms, international copyright registrations, company formations, trademark litigation, brand protection, trademark search india, foreign company registration, trademark classifications, copyright registration,  intellectual property laws, service mark registration, patent registration, brand registration and international trademark registration are some of the common business law services provided by these law firms. With the increase in competition, international trade and commerce these law firms are getting in very high demand by the corporate sector at international level.

Among the different countries In India you will find maximum number of corporate law firms having a large team of different kinds of attorneys and lawyers. All these law firms have different criteria and process of handling issues of corporate level. Law firm like tm-india.com that has a large team different lawyers having expertise in handling different kind of business issue and having complete command over guiding and offering required assistance to their domestic as well as international clients. Among the different company law services, new company registration is one of the famous and favored services among the different business houses. Every country has its own rules and procedures for company registration, like for new company registration in india there are some rules and regulations that one company has to meet in order to apply for its registration. All these rules are regulated by company act 1956.

Besides company registration, there are many corporate law services that are mostly demanded by different business houses in India. Like trademark registration that includes registration of trademark of perticular company in the form of design, symbol, logo or image. Trademark enables your company in getting unique identity in the international market. Besides trademark registration, there is another type of registration is there in this corporate world with name patent registration that act as powerful tool in order to prevent one’s unique invention in the of product or service from the misuse, sold or copied by the unauthorized person. Patent registration is a type of ownership provided by the government to product’s original inventor for his or her invention in any kind product or service that must be offered to the international market. In India the registration of perticular patent is done for 20 years that must be renewed at the regular interval of time.

Filed Under Business Law Tagged With Company, CORPORATE, Patent, Registration, Services, Trademark

Patent Valuation From a Practical View Point, and Some Interesting Patent Value Statistics From the Patentvaluepredictor Model

July 31, 2010 By Law Library Leave a Comment

Patent Valuation from a Practical View Point, and Some Interesting Patent Value Statistics from the PatentValuePredictor Model – Rick Neifeld, Ph.D., Patent Attorney, and President of Neifeld IP Law, PC and StockPricePredictor.com, LLC (1)

I. Introduction

My colleague Grover Rutter (see his article in this edition) has presented an excellent review of how to treat patents from a financial and tax reporting standpoint. However, how do you determine the real value of a patent? That begs the question: What factors are relevant to the real value of a patent? You have to know what factors into a valuation before you can address the valuation issue. Let’s start with some definitions, and then address this issue. After that, lets look at the PatentValuePredictor model and some actual valuation data and trends provided by the model.

II. General Valuation Theories

Valuation is an accounting term which means a lump sum of money payable to receive the future benefits of an asset at a particular time. There are three generally accepted accounting theories for valuing assets: market, cost, and income. Market theory values an asset as the present value ascribed to similar assets in an active public market. Cost theory values an asset by the cost of replacing the asset. Income theory values an asset by the present worth of the net anticipated economic benefit of the asset. Can we apply any of these theories to value patents?

III. Valuation Theories as Applied to Patents

Market theory valuation of patents has little or no utility because no two patents are similar enough for the sales price of one to define the value of another. Of course, you can say that patent licensing and sale applies market theory to reach a market price. The problem is that most patents are not bought or sold in an arms length negotiation, and therefore do not have an objective sale price. Even when they are licensed or sold, the transaction is usually clouded by other factors including tech transfer or line of business transfer.

Cost theory is generally inapplicable since a patent cannot be replaced. That is, once the invention is generally known, it is no longer patentable.

Income theorym is applicable in certain circumstances. Patents have known finite terms. If you can determine the income resulting from ownership of a patent over that term, you can assign a value to the patent just like you can assign a value to a long term bond.

Conventional methods using income theory to value a patent analyze micro economic data to determine the anticipated economic benefit of owning the patent. This micro economic data includes market data indicating the gross sales and net income derived from the sale of products attributable to the patent, and any revenue derived from licensing the patent. Applying income theory to micro economic data to value a patent is labor intensive, costly, and complex. This method should include an analysis to determine the meaning of the claims of the patent, a comparison of products to the claims of the patent to determine what products are actually covered by the patent, a determination of the size of the market covered by the patent, and a determination of the cost advantage of the patented technology compared to alternative technologies for that market. A micro economic analysis can be used to prove damages in patent infringement litigation. However, a micro economic analysis of a patent is often cost prohibitive for purposes of business valuation, capital allocation, taxes, and licensing. Moreover, the data necessary for members of the public to perform micro economic analysis of patents is simply not available. This is because that data includes relationships between patents, product lines, product line specific costs and earnings information, and licensing royalty rates and terms. Companies rarely release that type of information to the public. Thus, micro economic analysis of patents is often not feasible.

IV. Problems With Generally Applying Income Theory

I hasten to point out that even income theory valuation based upon micro economic analysis has limited utility in most commercial settings, as opposed to its application in patent infringement litigation. Why? Because patents and products do not have a one to one relationship. They have a many-to-many relationship. As a result, you cannot simply evaluate the value of a patent once you know the financials relating to certain products that the patent covers. To illustrate this point, consider the following two hypothetical situations.

FIRST HYPOTHETICAL SITUATION – UNUSED PATENTS:

A company owns ten patents. The first patent covers a first product, and the company manufactures that product for a hefty profit. The second through tenth patents do not cover the first product, but each one covers some alternative potential product that, if produced, could effectively compete with the first product. No one produces anything covered by the second through tenth patent. Do you allocate all value to the first patent? Surely the other nine patents have actual value to the company! How do you allocate income attributable to sales of the first product to the ten patents in order to assign value to each one of the ten patents?

SECOND HYPOTHETICAL SITUATION – THE MANY-TO-MANY CONUNDRUM:

There are three competing products in a particular niche market and five relevant patents. Patents 1, 2 and 3 each cover the first product. Patents 1, 2, and 4 cover a second product. Patents 2 and 5 cover the third product. You also know of the existence of prior art that indicates a likelihood that some claims in patents 1 and 5 are invalid. As an additional complication, what if it was unclear whether certain of the products were in fact covered by certain ones of the five patents. That is, what if the issue of infringement was not cut and dried? Confusing? You bet! Even if you knew the sales and profit margins for the various products in the hypothetical situations just noted, there would be no simple or logical way to assign values to the various patents. This is all too often the reality when comparing patents and products: there exist many-to-many patent-to-product relationships of uncertain bounds.

What have I told you so far? I have told you that classical approaches to valuation are inadequate. It is time for a new approach.

V. The PatentValuePredictor Theory for Valuing Patents

Now let me tell you about the PatentValuePredictor model for valuing patents. First, you should know that this model is implemented as a web service, and it provides valuations for all U.S. patents and (a provisional valuation of) published U.S. patent applications in real time.

How does the PatentValuePredictor model work? The PatentValuePredictor model simplifies the valuation determination problem by reformulating the problem. It does not attempt to address the many-to-many relationship noted above, and it does not attempt to find and use micro economic data relevant to any particular technology niche. Instead, it substitutes for the foregoing many-to-many quandary and the (generally unavailable) microeconomic data an estimate of an annual sales covered by the patent. The model generates a nominal annual sales covered by the patent based solely upon measurable properties of the patent document and the value of the Gross Domestic Product (GDP). I won’t bore you with the details of the model in this article. You can those details of the model in my earlier article entitled “A Macro-Economic Model Providing Patent Based Company Financial Indicators and Automated Patent Valuations ” posted in the publications sections of both www.PatentValuePredictor.com and www.Neifeld.com. Suffice it to say here that there is a heuristic relationship between measurable properties of patent documents and patent value. For example, generally speaking, the broader the claim protection, the more valuable the patent.

I will tell you that there are good points and bad points about the PatentValuePredictor patent valuations. First, the valuations are clearly statistical in nature and therefore imperfect. However, there is no such thing as perfection in valuation. Moreover, there is as far as I know, no other completely objective and generally applicable method of valuing patents. Furthermore, the Web implementation of the PatentValuePredictor model provides immediate results, and it is far less expensive (currently $100 per patent valuation) than any other method of which I am aware. Finally, as the size of an evaluated patent portfolio grows, the PatentValuePredictor model’s portfolio valuation becomes statistically more accurate. See for example the corporate patent portfolio value charts in my earlier article “A Macro-Economic Model Providing Patent Valuation and Patent Based Company Financial Indicators” posted in the publications sections of both www.PatentValuePredictor.com and www.Neifeld.com.

Finally, there are some other interesting statistics I would like to share with you that relate to valuation of patents. These statistics are derived from the PatentValuePredictor model.

First, there are currently 1,726,307 enforceable patents. To determine actual dollar values, the PatentValuePredictor model currently assumes that the entire GDP is covered by patents. The current GDP is $11.252 trillion. Therefore, the PatentValuePredictor model indicates that each enforceable U.S. patent covers, on average, annual sales of about $6.5 million (that is, the GDP divided by the number of currently enforceable patents). However, profit is, generally speaking, only a small fraction of gross sales, and old patents near the end of their term have reduced value. That explains why the PatentValuePredictor model determines an average value of enforceable patents is only about $2.8 million. To get this result, we calculated the current valuation of each one of the 1,726,307 enforceable patents, and then calculated the average value.

The PatentValuePredictor model indicates that the bulk of the most valuable patents are and have for many years been in the Pharmaceutical or Biotechnology (Pharma/Bio) technology areas. The chart below shows the currently ten most valuable patents and their technology area.

TEN CURRENTLY MOST VALUABLE PATENTS (AS OF 3/11/2004)

Patent

Issued

Current Value ($)

Assignee

Technology

6,517,866 2/11/2003 1,797,722,689 Pfizer Inc. Pharma/Bio

6,500,987 12/31/2002 1,570,968,527 Teva Pharmaceutical Industries Ltd. Pharma/Bio

6,566,344 5/20/2003 1,481,848,538 Idenix Pharmaceuticals, Inc. Pharma/Bio

6,465,496 10/15/2002 1,408,931,126 Teva Pharmaceutical Industries, Ltd. Pharma/Bio

6,452,054 9/17/2002 1,220,308,695 Teva Pharmaceutical Industries, Ltd. Pharma/Bio

6,221,640 4/24/2001 1,194,927,644 Cubist Pharmaceuticals, Inc. Pharma/Bio

6,071,970 6/6/2000 1,107,999,343 NPS Pharmaceuticals, Inc. Pharma/Bio

6,319,919 11/20/2001 1,081,784,355 Davis; Bonnie (Syosset, NY) Pharma/Bio

5,610,034 3/11/1997 1,071,288,767 Alko Group Ltd. Pharma/Bio

6,022,716 2/8/2000 1,069,310,287 Genset SA Pharma/Bio

While the Pharma/Bio tech area has held the lead for most valuable patents, the relative value of the most valuable patents has been increasing for decades. The charts below show the ten most valuable patents issued respectively in 1983, 1993, and 2003, and a relative measure of their value. Note in the sequence of three charts below the trend of the relative value to increase over the decades.

TEN MOST VALUABLE PATENTS ISSUED IN 1983

Patent Issued Relative Value When Issued Assignee Technology

4,399,282 8/16/1983 1,343 Kabushiki Kaisha Yakult Honsha Pharma/Bio

4,375,514 3/1/1983 1,256 Schering, Aktiengesellschaft Pharma/Bio

4,372,948 2/8/1983 974 Kureha Kagaku Kogyo Kabushiki Kaisha Pharma/Bio

4,374,829 2/22/1983 661 Merck & Co., Inc. Pharma/Bio

4,396,617 8/2/1983 660 Duphar International B.V. Pharma/Bio

4,399,276 8/16/1983 605 Kabushiki Kaisha Yakult Honsha Pharma/Bio

4,369,189 1/18/1983 551 Union Carbide Corporation Pharma/Bio

4,410,537 10/18/1983 507 Burroughts Wellcome Co. Pharma/Bio

4,399,148 8/16/1983 499 Union Carbide Corporation Pharma/Bio

4,372,953 2/8/1983 490 Otsuka Pharmaceutical Company, Limited Pharma/Bio

TEN MOST VALUABLE PATENTS ISSUED IN 1993

Patent Issued Relative Value When Issued Assignee Technology

5,252,474 10/12/1993 1,696 Merck & Co., Inc. Pharma/Bio

5,256,558 10/26/1993 969 The Trustees of Rockefeller University Pharma/Bio

5,258,502 11/2/1993 868 Massachusetts Institute of Technology Pharma/Bio

5,268,273 12/7/1993 824 Phillips Petroleum Company Pharma/Bio

5,182,263 1/26/1993 823 Hoffmann-La Roche Inc. Pharma/Bio

5,187,241 2/16/1993 763 International Business Machines Corporation Pharma/Bio

5,262,568 11/16/1993 756 State of Oregon Pharma/Bio

5,198,563 3/30/1993 695 Phillips Petroleum Company Chem/Polymer

5,227,405 7/13/1993 690 Duke University Pharma/Bio

5,196,524 3/23/1993 679 Eli Lilly and Company Pharma/Bio

MOST VALUABLE PATENTS ISSUED IN 2003

Patent Issued Relative Value When Issued Assignee Technology

6,517,866 2/11/2003 3,374 Pfizer Inc. Pharma/Bio

6,566,344 5/20/2003 2,646 Idenix Pharmaceuticals, Inc. Pharma/Bio

6,602,861 8/5/2003 1,252 Research Corporation Technologies, Inc. Pharma/Bio

6,531,282 3/11/2003 1,225 Oligotrail, LLC Pharma/Bio

6,605,606 8/12/2003 1,109 Miravant Pharmaceuticals, Inc. Pharma/Bio

6,665,641 12/16/2003 884 ScanSoft, Inc. Software

6,602,503 8/5/2003 861 Biogen, Inc. Pharma/Bio

6,596,332 7/22/2003 841 Nestec S.A. Foods products

6,602,499 8/5/2003 824 The General Hospital Corporation Pharma/Bio

RE038073 4/8/2003 804 Research Corporations Technologies, Inc. Pharma/Bio

VI. Conclusion

Conventional valuation models are not generally applicable to patents. In addition, where they are applicable, they are labor intensive, and often require a series of assumptions. The PatentValuePredictor model is unconventional in the sense that it applies a modified version of income theory in which a nominal cash flow is determined based upon a macro economic model that applies heuristic rules. It has the benefits of being completely objective, applicable to all patents, inexpensive, and quick. Application of that model to the universe of U.S. patents indicates that the most valuable patents have generally been in the pharmaceutical and biotechnology technology area for the last three decades.

Filed Under Patents Tagged With From, Interesting, Model, Patent, Patentvaluepredictor, Point, Practical, Some, Statistics, Valuation, Value, View

What Any Decision Maker Needs to Know About Patent Protection

July 20, 2010 By Law Library Leave a Comment

What Any Decision Maker Needs to Know about Patent Protection

Richard Neifeld, Ph.D., Patent Attorney and Robert Crockett, P.E., Patent Attorney

I. Introduction

This paper explains the basic information a decision maker needs to know regarding patents. There are certain concepts the understanding of which is a prerequisite for this topic. Those concepts are provided in section II. Section III relates patents to countries. Sections IV and V explain the legal requirements for getting patents and how long patents last. Section VI discusses patent treaties. Section VII provides ballpark cost estimates for acquiring patents.

II. Prerequisite Definitions

The term “property right,” also called “ownership of property,” means the right to exclude others from using the property. Property was historically classified as either land or personal, personal property encompassing all property other than land.

The term “intangibles” means rights that are not land or tangible personal property. Intangibles include contractual rights, good will, and intellectual property.

The term “intellectual property” means property rights in certain intangibles, such as patents, trademarks, and copyrights.

Assignment means transfer of ownership of property. (For basic information on invention ownership issues, see http://www.neifeld.com/introart3.html.)

A patent is a property right that has the attributes of personal property. Those attributes include the ability to be bought sold (assigned), and licensed. Like all property, its exclusive right can be enforced. Enforcement of any property right includes the right to sue in a court for (1) damages and (2) an injunction to stop unauthorized use of the property.

There are different kinds of patents, including utility patents, design patents, plant patents, utility models, architectural design rights, and circuit architecture rights. This paper will describe only the most commercially important, which are utility patents.

Utility patents provide a property right to things having an industrial utility, including products, and processes of making and using products. Under current U.S. law, products include computers programmed to perform a useful function, including, for example, a business accounting function, and methods of using include computers running such programs. European law currently does not allow patents on accounting functions, also referred to as business method patents. On the issue of business method patents, Japan’s law is currently somewhere in between that of the U.S. and Europe.

The exclusive right is defined by the claims and the disclosure of a patent. What the claims cover is called subject matter. That is, claims define or delimit “subject matter” to which the patentee has an exclusive right.

Unauthorized use of an intellectual property right is called infringement. Remedies for infringement typically include damages (money equivalent to the harm caused to the owner of the patent by the past infringement) and injunctions (a court order forcing the infringer to stop his infringing activity).

A specification is a written description, often including figures, of subject matter sought to be patented, such as an invention. I try to limit the use of the word “invention” in this paper because it is in many senses mis-descriptive of what a patent can protect.

A filing date is the date that a national or international patent office recognizes its receipt of an application filed in that office.

Prior art means knowledge generally known by other than the patent applicants prior to when the applicants made their discovery or invention. This is a generally applicable definition in the sense that there are several exceptions and fine points that vary from country to country. One major exception is that almost all countries other than the U.S. define the date of discovery or invention claimed in the patent application as the filing date of the application, not an earlier date when work leading to the discovery or invention was done.

III. Who Grants a Patent and Where is Each Patent Enforceable

Generally speaking, patent rights are granted by nations. Each patent is only enforceable in the nation in which it is granted. There are some international treaties that extend the one patent per nation concept. Europe, for example, has one agency, the European Patent Office, that grants European patents. There are a few other such regional patenting authorities, one for the states of the former Soviet Union, and one for certain states in Africa.

Currently, there is no international patent. That is, there is no single patent granted by any patenting authority that is legally enforceable everywhere. However, a world patent has been discussed for decades, and international organizations are making incremental progress towards such an international patenting system. Don’t hold your breath, though. Most people in the patent business expect no international patent in the near future. Also, see below regarding international treaties that ease the burden of obtaining a patent on one invention in many countries.

IV. How Long Are Patents Enforceable

Generally speaking, patent are enforceable for twenty years from when the application for the patent is filed. There are of course exceptions and variations from country to country and application to application.

V. What are the Core Conditions for Obtaining a Patent on Anything

A. The Substantive Requirements for Obtaining a Patent

The core requirements worldwide for obtaining a utility patent are (1) that the thing is useful and (2) that the thing is novel. There is a third requirement, which is referred to as either the “inventive step” or the “non-obviousness” requirement, which generally means that the thing being patented would not have been readily apparent or immediately obvious to someone working in that technology field. The U.S. applies the non-obviousness standard. Europe applies the “inventive step” standard. (The U.S. has imposed an additional requirement, called the “best mode” requirement, but that is a technicality not relevant to the purpose of this paper.)

B. The Procedural Requirements for Obtaining a Patent

The process of obtaining a patent includes the steps of preparing and filing an application for the thing to be patented, prosecuting the patent to issuance, and paying applicable government fees. While this sounds simple, it definitely is not. The preparation of a quality disclosure for a patent application is essential to the government eventually granting the patent and the resulting patent being legally enforceable and therefore accorded respect by potential business competitors.

Generally speaking, the specification must include a sufficient description to enable one of ordinary skill in the art to which it pertains to make and use the claimed subject matter in order for the application to result in a patent. This is generally true in all countries that issue utility patents. In addition, in the U.S., the specification must also disclose the best mode that the inventor had in mind for making and using the invention at the time of filing of the application.

Failing any of the substantive or procedural requirements can fatally flaw the attempt to obtain a patent.

VI. Treaties that Facilitate Obtaining Patents in More than One Country on the Same Thing

There are currently two mechanisms to facilitate extending patent protection on something to more than one country. They are the Paris Convention and the Patent Cooperation treaty.

A. The Paris Convention

The Paris Convention’s core feature is that it allows the filing of a patent application in a second country that is a member of the Convention to be accorded the filing date of an earlier filed application filed in a first country. That allows a patent applicant to file the application in one country, and then to have copies of the filed application sent to agents in other countries for filing there. The Paris Convention has a time limit of one year (for utility patents). That is, the subsequently filed applications in the other countries must be filed within 1 year of the first filed application in the first country, to be accorded the earlier filing date. This right is incredibly important because, in most countries, public disclosure of the subject matter of a patent application prior to filing the application is an absolute bar to obtaining a patent for that subject matter. The Paris Convention allows the applicant to file a single patent application in one country, and then publicly disclose and sell products and processes disclosed in the application without automatically losing the right to a similar patent in the other countries that are members of the Paris Convention. Almost all countries of industrial/commercial significance are members of the Paris Convention. The Paris Convention has been in existence since about 1900 CE.

B. The Patent Cooperation Treaty

The Patent Cooperation Treaty goes one step beyond the Paris Convention. The Patent Cooperation Treaty allows a patent applicant to legally effect filing in every country that is member to the PCT by filing a single application, a PCT application, in any country that is a member of the PCT. The PCT application, however, will not issue into an international patent. Instead, if the applicant decides to obtain a patent in a country from the PCT application, the applicant must still file and pay for the “national stage proceeding” of the PCT application in that country. The benefits of filing a PCT application instead of national stage applications are (1) the PCT application allows for a minimum of 30 months to file “national stage” application during which time the applicant has no substantial patent related costs, (2) the PCT application reduces the formalities and costs required in filing applications in multiple countries, and (3) the PCT application process can provide an initial indication (prior to the 30 month period just noted) regarding the likelihood that the subject matter of the application is patentable so that the applicant can make an informed financial decision regarding cost/benefit of paying for the national stage proceedings in any country. Almost all industrially significant countries are members of the PCT. There are still some exceptions, like Thailand. The PCT has been in existence since the 1970’s and it has been tremendously effective, with tens of thousands of PCT applications now filed annually.

The PCT incorporates the Paris Convention. What this means is that a PCT application can claim Paris Convention priority to an earlier patent application. Therefore, a patent applicant can, for example, first file an application for a U.S. patent. Then, the applicant can file a PCT application which legally has the U.S. patent application’s priority date because of the Paris Convention. Then, the applicant can enter the PCT national stage in selected countries, for example, selecting the United States, China, Japan, Europe, and Korea for PCT national stage proceedings, and not selecting (and thereby abandoning patent protection in) all other countries.

C. Other Treaties Facilitating Obtaining National Patents

Europe has the European Patent Convention. The former Soviet Union has the Eurasian Patent Convention. Some African national have the OAPI treaty.

The EPC allows a single application to issue into a single European patent. However, generally speaking, that European patent is currently not enforceable in any European country unless the granted patent has been translated and filed in the country’s national patent office within 3 months of the date of grant of the European patent. Hence, the substantial translation and national agent costs, and annuities costs, also exist for European countries. The other two treaties are currently of negligible importance.

VII. Costs and Cost/Benefit

No one can file a patent for an invention in all countries of the world. Anyone that thinks they can is fooling themself. Consider the following rough outline of costs. These costs estimates are ball park, and generally independent of country.

Initially, there is the cost of any determination whether to file a patent application (internal corporate patent committee review, patent prior art search and evaluation). Next, there is the cost of drafting a patent specification, claims, and figures. That currently ranges for typically patent applications from three to twenty thousand dollars, depending upon the importance of the invention, technological complication, budget, etc. Most of that cost is the cost of drafting the specification and claims, typical a few tens of hours of attorney time. There is the government cost of filing the application, which typically ranges between one and three thousand dollars. That is the cost to file a first application.

Consider now the cost to file Paris Convention or PCT national stage equivalents. This cost includes the foreign agent’s docketing and filing charges, typically one to two thousand dollars, and the foreign government’s filing fees, typically one to two thousand dollars. That is per country. If, however, the target country does not accept filings in the language in which the specification was originally drafted, then include the cost of a professional translator skilled in patent translations. That ranges from 0.20 to 0.40 cents per word. For a 50 page specification having 300 words per page at one and one half line spacing (15,000 words total), that will cost three to six thousand dollars. If you have a 100 page specification, double that value. If you have a 200 page specification, triple that value.

You have now considered the cost to get the application on file. Add to that the cost of complying with each government patent office’s formalities requirements, and responding to each government patent office’s examiner’s review and rejections or requirements, including both the foreign agent’s fees and the national agent’s fees.

Now add in each government’s charges for granting the application, the foreign agent’s charges for paying for the grant, typically about two thousand dollars, the costs for your national agent to handle those transactions, and then the foreign government annuities, the costs for the foreign agent to track and pay those fees, and the cost for your national agent to track report to you, and pass along your instructions. The foreign government annuities vary from country to country, the determination of the date on which they are due varies from country to country, and the fees typically increase from about one hundred dollars the first year to over a thousand dollars near the end of the 20 year patent term. The foreign agent’s fees depend upon the magnitude of the government fees but are never less than about one hundred dollars.

All of the foregoing assumes that no one challenges your patent application via an opposition proceeding or the like. Any proceeding involving more than just the patent application and the government will increase by tenfold the costs for that country, and impact the costs in the other countries as well.

Thus, to file for, obtain, and maintain a patent for something in all countries of the world would cost millions of dollars. Given those constraints, any patent applicant must make cost/benefit analyses to determine in whether and in which countries to seek patents. Moreover, the cost benefit analysis and timing of incurring costs in the patenting process are substantially influenced by the procedures (national, Paris, PCT, and EPC filings) used to obtain patent protection.

VIII. Further Information

This article has discussed some of the basics of patent law that every decision maker needs to know. Additional articles and resources on patent law and intellectual property can be found at www.neifeld.com.

Filed Under Patents Tagged With About, Decision, Know, Maker, Needs, Patent, Protection
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