Patent It Yourself By Patent Attorney David Pressman 13th edition THIRTEENTH EDITION APRIL 2008 Editor RICHARD STIM Cover Design SUSAN PUTNEY Proofreading ROBERT WELLS Index JULIE SHAWVAN Printing CONSOLIDATED PRINTERS, INC. INTERNATIONAL STANDARD SERIAL NUMBER (ISSN) 1554-9925 ISBN-13: 978-1-4133-0854-9 ISBN-10: 1-4133-0854-6 Copyright © 1985, 1995, 1996, 1997, 1998, 2000, 2002, 2003, 2004, 2005, 2006, and 2008 by David Pressman ALL RIGHTS RESERVED. PRINTED IN THE U.S.A. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise without the prior written permission of the publisher and the author. Reproduction prohibitions do not apply to the forms contained in this product when reproduced for personal use. Quantity sales: For information on bulk purchases or corporate premium sales, please contact the Special Sales Department. For academic sales or textbook adoptions, ask for Academic Sales. Table of Contents Your Legal Companion A. You Don’t Have to Use a Patent Attorney 2 B. A Layperson Can Do a Quality Job 2 C. Using an Attorney 2 D. Should You Do It Yourself? 2 E. New Material in the irteenth Edition 3 F. How to Use Patent It Yourself 5 1 Introduction to Patents and Other Intellectual Property A. What Is a Patent and Who Can Apply for It? 9 B. e ree Types of Patents 9 C. e Novelty and Unobviousness Requirement 10 D. How Long Do Patent Rights Last? 10 E. Patent Filing Deadlines 13 F. Patent Fees 13 G. e Scope of the Patent 14 H. How Patent Rights Can Be Lost 14 I. What Rights a Patent Grants and the Prior-Art Reference Value of a Patent 14 J. What Can’t Be Patented 15 K. Some Common Patent Misconceptions 15 L. How Intellectual Property Law Provides “Offensive Rights” (and Not Protection) to Inventors 16 M. Alternative and Supplementary Offensive Rights 16 N. Intellectual Property—e Big Picture 16 O. Trademarks 18 P. Copyright 21 Q. Trade Secrets 25 R. Unfair Competition 28 S. Acquisition of Offensive Rights in Intellectual Property —Summary Chart 29 T. Summary of Legal Remedies for Misappropriation of Various Types of Intellectual Property 29 U. Invention Exploitation Flowchart 29 V. Summary 31 2 e Science and Magic of Inventing A. What I Mean by “Invention” 34 B. Inventing by Problem Recognition and Solution 35 C. Inventing by Magic (Accident and Flash of Genius) 37 D. Making Ramifications and Improvements of Your Invention 38 E. Solving Creativity Problems 39 F. Contact Other Inventors 41 G. Beware of the Novice Inventor’s “PGL Syndrome” 41 H. Don’t Bury Your Invention 42 I. Summary 42 3 Documentation and the PPA A. Introduction 45 B. Documents Are Vital to the Invention Process 45 C. Documentation Is Vital to Prove Inventorship 46 D. Trade Secret Considerations 47 E. Record Conception and the Building and Testing of Your Invention 47 F. How to Record Your Invention 49 G. Another Way to Record Conception or Building and Testing— e Invention Disclosure 54 H. e Provisional Patent Application— A Substitute for Building and Testing, With Some Disadvantages 56 I. Don’t Sit on Your Invention After Documenting It 75 J. Don’t Use a “Post Office Patent” to Document Your Invention 75 K. Summary 75 4 Will Your Invention Sell? A. Why Evaluate Your Invention for Salability? 78 B. Start Small but Ultimately Do It Completely 79 C. You Can’t Be 100% Sure of Any Invention’s Commercial Prospects 79 D. Take Time to Do a Commercial Feasibility Evaluation 79 E. Check Your Marketability Conclusions Using the Techniques of Consultation and Research 85 F. Now’s the Time to Build and Test It (If Possible) 87 G. e Next Step 88 H. Summary 89 5 Is It Patentable? A. Patentability Compared to Commercial Viability 92 B. Legal Requirements for a Utility Patent 92 C. Requirement #1: e Statutory Classes 94 D. Requirement #2: Utility 98 E. Requirement #3: Novelty 100 F. Requirement #4: Unobviousness 105 G. e Patentability Flowchart 114 H. Summary 115 6 Search and You May Find A. Why Make a Patentability Search? 119 B. When Not to Search 121 C. e Two Ways to Make a Patentability Search 122 D. How to Make a Preliminary Search 122 E. e Quality of a Patent Search Can Vary 123 F. How to Hire a Patent Professional 123 G. How to Prepare Your Searcher 125 H. Analyzing the Search Report 125 I. Do-It-Yourself Searching in the PTO 137 J. e Scope of Patent Coverage 151 K. Searching Paper Patents in a Patent and Trademark Depository Library 152 L. Computer Searching 156 M. Problems Searching Software and Business Inventions 159 N. PTO Searches on the Internet 160 O. MicroPatent Patent Searches on the Internet 166 P. Science Search Engine 166 Q. Summary 166 7 What Should I Do Next? A. Drop It If You Don’t See Commercial Potential (Chart Route 10-12-14-X) 168 B. Try to Sell Invention to Manufacturer Without “Regular” Patent Application (Chart Route 10-12-14-16-18-B) 168 C. File an Application and Sell It to or License a Manufacturer If You See Commercial Potential and Patentability (Chart Route 14-16-18-20-22-A) 170 D. If You Have Commercial Potential Without Patentability, License or Sell Your Invention to a Manufacturer Without Filing (Chart Route 16-24-26-28-30-B) 171 E. Make and Sell Your Invention Yourself Without a Utility Patent Application (Chart Route 16-30-C) 172 F. Manufacture and Distribute Your Invention Yourself, Keeping It as a Trade Secret (Chart Route 20-32-34-D) 173 G. File Patent Application and Manufacture and Distribute Your Invention Yourself (Trade-Secretable Invention) (Chart Route 20-32-34-36-E) 174 H. File Patent Application and Manufacture and Distribute Invention Yourself (Non-Trade-Secretable Invention) (Chart Route 20-32-38-36-E) 174 I. Test Market Before Filing (Chart Route 20-32-38-40-F) 174 J. Summary 175 8 How to Draft the Specification and Initial Drawings A. Lay Inventors Can Do It! 178 B. What’s Contained in a Patent Application 179 C. What Happens When Your Application Is Received by the PTO 180 D. Do Preliminary Work Before Preparing Your Patent Application 181 E. Flowchart 183 F. Writing Your Patent Specification to Comply With the Full Disclosure Rules 183 G. Software, Computer-Related Inventions, and Business Methods 185 H. First Prepare Sketches and Name Parts 188 I. Drafting the Specification 190 J. Review Your Specification and Abstract Carefully 201 K. Checklist for Your Patent Application Draft 201 L. Specification of Sample Patent Application 204 M. Summary 217 9 Now for the Legalese—e Claims A. What Are Claims? 221 B. e Law Regarding Claims 222 C. Some Sample Claims 223 D. Common Misconceptions Regarding Claims 227 E. One Claim Should Be as Broad as Possible 228 F. e Effect of Prior Art on Your Claim 229 G. Technical Requirements of Claims 230 H. Drafting Your Main (Independent) Claim 236 I. Other Techniques in Claim Writing 238 J. Drafting Dependent Claims 241 K. Drafting Additional Sets of Claims 245 L. Checklist for Drafting Claims 246 M. Summary 246 10 Finaling and Mailing Your Application A. e Drawing Choices 252 B. PTO Rules for Drawings 253 C. Doing Your Own Drawings 255 D. Consider Using a Professional Patent Draftsperson 265 E. Finaling Your Specification, Claims, and Abstract 265 F. Name All True Inventors and Only True Inventors 266 G. e Essential and Optional Parts of Your Application 270 H. Completing the Patent Application Declaration 270 I. Complete the Transmittal Letter and Fee Transmittal, Payment, and Postcard 271 J. Maintain an Orderly File 277 K. Assembly and Mailing of Your Application—Final Checklist 278 L. Using Express Mail to Get an Instant Filing Date 278 M. Receipt at Application Was Received in PTO 278 N. File the Information Disclosure Statement Within ree Months 280 O. Assignments 284 P. Petitions to Make Special 285 Q. Filing a Design Patent Application 287 R. Filing Via e PTO’s EFS-Web System 292 S. Summary 294 11 How to Market Your Invention A. Perseverance and Patience Are Essential 299 B. Overview of Alternative Ways to Profit From Your Invention 299 C. Be Ready to Demonstrate a Working Model of Your Invention to Potential Customers 302 D. Finding Prospective Manufacturers/Distributors 303 E. e “NIH” Syndrome 304 F. e Waiver and Precautions in Signing It 304 G. e Best Way to Present Your Invention to a Manufacturer 306 H. Presenting Your Invention by Correspondence 307 I. Making an Agreement to Sell Your Invention 307 J. Manufacturing and/or Distributing the Invention Yourself 308 K. Summary 310 12 Going Abroad A. Introduction 312 B. e Paris Convention and the One-Year Foreign Filing Rule 312 C. Other Priority Treaties Similar to the Paris Convention 313 D. European Patent Office/Europäisches Patentamt/Office Européen des Brevets (EPO) 313 E. e Patent Cooperation Treaty (PCT) 314 F. Non-Convention Countries 314 G. Never Wait Until the End of Any Filing Period 314 H. e Early Foreign Filing License or Mandatory Six-Month Delay 317 I. Don’t File Abroad Unless Your Invention Has Very Good Prospects in Another Country 317 J. e Patent Laws of Other Countries Are Different 318 K. e Ways to File Abroad 318 L. Rescind Any Nonpublication Request 323 M. Resources to Assist in Foreign Filing 323 N. Summary 324 13 Getting the PTO to Deliver A. What Happens After Your Patent Application Is Filed 328 B. General Considerations During Patent Prosecution 331 C. A Sample Office Action 339 D. What to Do When You Receive an Office Action 345 E. Format for Amending the Specification and Claims 353 F. Drafting the Remarks 364 G. Drawing Amendments 369 H. Typing and Faxing the Amendment 370 I. If Your Application Is Allowable 372 J. If Your First Amendment Doesn’t Result in Allowance 373 K. Interferences 377 L. Statutory Invention Registration (SIR) 378 M. If Your Application Claims More an One Invention 378 N. e Public May Cite Additional Prior Art Against Your Published Patent Application 378 O. NASA Declarations 379 P. Design Patent Application Prosecution 379 Q. What to Do If You Miss or Want to Extend a PTO Deadline 379 R. Summary 380 14 Your Application Can Have Children A. Available Extension Cases 384 B. Continuation Applications 386 C. Request for Continued Examination (RCE) 388 D. Divisional Applications 389 E. Continuation-in-Part and Independent Applications 390 F. Reissue Applications 392 G. Statutory Invention Registration (SIR) and Defensive Publications 393 H. Substitute Applications 393 I. Double Patenting and Terminal Disclaimers 393 J. Summary 394 15 After Your Patent Issues: Use, Maintenance, and Infringement A. Issue Notification 397 B. Press Release 397 C. Check Your Patent for Errors 397 D. Patent Number Marking 398 E. Advertising Your Patent for Sale 398 F. What Rights Does Your Patent Give You? 399 G. Be Wary of Offers to Provide Information About Your Patent 401 H. Maintenance Fees 402 I. Legal Options If You Discover an Infringement of Your Patent 404 J. What to Do About Patent Infringement 405 K. Product Clearance (Can I Legally Copy or Make at?) 409 L. Citing Prior Art Against Patent Applications and Patents 412 M. e Court of Appeals for the Federal Circuit (CAFC) 413 N. Using the Reexamination Process to Reduce the Expense of Patent Infringement Suits 414 O. Jury Trials 414 P. Arbitration 415 Q. How Patent Rights Can Be Forfeited 415 R. Your Patent Is Subject to Interference for One Year 415 S. Tax Deductions and Income 416 T. Patent Litigation Financing 416 U. Summary 417 16 Ownership, Assignment, and Licensing of Inventions A. e Property Nature of Patents 420 B. Who Can Apply for a Patent? 420 C. Joint Owners’ Agreement 421 D. Special Issues Faced by the Employed Inventor 422 E. Assignment of Invention and Patent Rights 424 F. Record Your Assignment With the PTO 425 G. Licensing of Inventions—An Overview 427 H. Universal License Agreement 427 I. How Much Should You Get for Your Invention? 431 J. Summary 432 Appendixes 1 Abbreviations Used in Patent It Yourself 2 Resources: Government Publications, Patent Websites, and Books of Use and Interest A. Government Publications 438 B. Patent Websites 438 C. Books of Use and Interest 441 D. Books Relating to Self-Improvement 442 3 Glossaries A. Glossary of Useful Technical Terms 446 B. Glossary of Patent Terms 452 4 Fee Schedule 5 Mail, Telephone, Fax, and Email Communications With the PTO A. Patent and Trademark Office Mail Addresses 464 B. Patent and Trademark Office Telephone and Faxes 465 6 Quick-Reference Timing Chart [...]... come up with an invention, you may practice (make, use, and sell) it freely, with or without a patent, provided that it s not covered by the claims of another’s “in force” patent, that is, a patent that is within its 20-year term Common Misconception: Once you get a patent, you’ll be rich and famous 16 | PATENT IT YOURSELF Fact: A patent is like a hunting license: it s useful just to the patent is... Use Patent It Yourself .5 2 | PATENT IT YOURSELF Patent It Yourself is a guidebook that allows you, the inventor, to patent and commercially exploit your invention by yourself It provides: invention, and how and when to file a Provisional Patent Application; together with tear-out, copyable, or downloadable forms that are necessary for each step of the process; for getting patent protection... invention covered (“license it ) in return for royalty payments More on this in Chapter 16 B The Three Types of Patents There are three types of patents—utility patents, design patents, and plant patents Let’s briefly look at each Utility Patents: As we’ll see in Chapters 8 to 10, a utility patent, the main type of patent, covers produce a utilitarian result Examples of utility inventions are Velcro... date of filing while design patents last 14 years from the date of CHAPTER 1 | INTRODUCTION TO PATENTS AND OTHER INTELLECTUAL PROPERTY | 11 Fig 1A-Utility Patent Abstract Page 12 | PATENT IT YOURSELF The Life of an Invention Although most inventors will be concerned with the rights a patent grants during its monopoly or in-force period (from the date the patent issues until it expires (20 years after... site for Patent It Yourself, (www.patentityourselfupdates blogspot.com) and at Nolo’s site (www.nolo.com) —David Pressman 4 | PATENT IT YOURSELF Patent It Yourself Quick-Start Guide We realize that Patent It Yourself is a big book, and we hope you will read it from cover to cover to get a full picture of the field of patents and inventions However if you don’t have the time, this Quick-Start Guide will... be patented The design must be for an article that is different from an object in its natural state; thus a figure of a man would not be suitable for a design patent but if the man is an unnatural position, this can be patented For an example, see patent Des of the shape must be purely ornamental or aesthetic and part of an article; if it is functional, then only a utility patent is proper, even if it. .. to protect it Follow the RESAM procedure (Chapter 1): Record the invention properly or file a Provisional Patent Application (Chapter 3) Evaluate commercial potential to see if it will sell (Chapter 4) Search it for patentability to see if you will be able to get a patent (Chapters 5 and 6) Apply for a patent (Chapters 8 through 10) Market it to a suitable company (Chapter 11) You have a patent and... three years 4 In-Force Patent Patent Issued but Hasn’t Yet Expired: After the patent issues,* the patent owner can bring and maintain a lawsuit for patent infringement against anyone who makes, uses, or sells the invention without permission The patent s in-force period lasts from the date it issues until 20 years from its filing date, provided maintenance fees are paid Every patent is guaranteed an... 11.5 years after issuance Design Patents: To file a design patent application, you must pay a Design Patent Application Filing Fee To have the PTO issue your design patent, you must pay a Design Patent Application Issue Fee The law doesn’t there’s no PPA for a design invention 14 | PATENT IT YOURSELF Plant Patents: To file a plant patent application, you must pay a Plant Patent Application Filing Fee... conjunction with drawings (it s easier than you think), you aren’t diligent and committed enough to complete projects in a reasonable time, or you think you can’t complete a detailed writing job use an attorney in conjunction with Patent It Yourself, to monitor and enhance the attorney’s work The above can be expressed by the following proportion: DIY α AF which means you should be inclined to Do It Yourself . on the update site for Patent It Yourself, (www.patentityourselfupdates. blogspot.com) and at Nolo’s site (www.nolo.com). —David Pressman 4 | PATENT IT YOURSELF Patent It Yourself Quick-Start. Quality Job 2 C. Using an Attorney 2 D. Should You Do It Yourself? 2 E. New Material in the irteenth Edition 3 F. How to Use Patent It Yourself 5 Your Legal Companion 2 | PATENT IT YOURSELF Patent. of Patents ere are three types of patents—utility patents, design patents, and plant patents. Let’s brie y look at each. r Utility Patents: As we’ll see in Chapters 8 to 10, a utility patent,