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If you want the help of a trained professional—and we’ll always point out situations in which we think that’s a good idea—consult an attorney licensed to practice in your state. please note Nolo’s Patents for Beginners by Attorneys David Pressman and Richard Stim 5th edition FIFTH EDITION MAY 2006 Editor RICHARD STIM Book Design TERRI HEARSH Proofreading SUSIE SEEFELT LESIEUTRE Index ELLEN SHERRON Printing DELTA PRINTING SOLUTIONS, INC. Pressman, David, 1937– Nolo’s patents for beginners / by David Pressman and Richard Stim 5th ed. p. cm. ISBN 1-4133-0455-9 (alk. paper) 1. Patent laws and legislation United States Popular works. 2. Patent practice United States Popular works. I. Title: Patents for beginners. II. Stim, Richard. III. Title. KF3114.6.P737 2006 346.7304’86 dc22 2006040060 Copyright © 1998, 2000, 2001, 2002, 2004, and 2006 by Nolo and David Pressman. ALL RIGHTS RESERVED. Printed in the U.S.A. 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Organization of Text 2 B. Icons Used in This Book 3 1 Patents and Intellectual Property Law A. What Is a Patent? 10 B. The Three Types of Patents 10 C. Patent Rights 11 D. The Requirements for Obtaining a Patent 12 E. How Long Do Patent Rights Last? 12 F. How Patent Rights Can Be Lost 13 G. Intellectual Property—The Big Picture 13 H. Trademarks 14 I. Copyright 15 J. Trade Secrets 18 K. Unfair Competition 22 2 Qualifying for a Patent A. Legal Requirements for a Utility Patent 25 B. Statutory Classes 26 C. Utility 30 D. Novelty and Prior Art 32 E. Nonobviousness 40 F. Legal Requirements for a Design Patent 48 G. Legal Requirements for a Plant Patent 51 3 Invention Documentation A. The Importance of Documentation 54 B. Lab Notebook 55 C. Invention Disclosure 58 D. Documenting Conception: Disclosure Document Program (DDP) 58 E. Documenting Reduction to Practice: Provisional Patent Application 60 F. Trade Secret Considerations 61 4 Patent Searching A. Principles of Patent Searching 64 B. Hiring a Patent Searcher 65 C. Do It Yourself Searching 67 5 Reading and Writing Patents A. Elements of a Patent 83 B. Invention and Inventor Data 83 C. Specification 83 D. Claims 94 [...]... Inventions: Secondary Factors 47 F Legal Requirements for a Design Patent 48 1 New and Original 48 2 Nonobviousness 49 3 Ornamental Design for an Article of Manufacture 50 24 NOLO’S PATENTS FOR BEGINNERS G Legal Requirements for a Plant Patent 51 1 Plant Patents 51 2 Utility Patents for Plants 52 ... Design Patents There’s considerable overlap here, because aesthetics are the basis of both forms of coverage Design patents are used mainly to cover industrial designs where the shape of the object has ornamental features and the shape is inseparable from, or meaningless if separated from, the object For 18 NOLO’S PATENTS FOR BEGINNERS example, a tire tread design and a computer case are perfect for design... The explosive growth in biotechnology, information exchange, and the advent of business method and software patents has resulted in more patents being issued than ever before Patents are now considered an integral part of a corporation’s strategic business plan And this strategy is not limited to corporate boardrooms For example, the total revenue from patents for non-profit universities has gone from... expression first assumes can’t cover the book’s subject matter, some tangible form, for example, once a message, or teachings For example, you song is recorded or a book is written are free to publish any of the ideas, Copyright lasts for the life of the author concepts, and information in this (or any) plus 70 years, or for works made for hire, book, provided that you use your own 95 years from publication... owner can give anyone permission to use the invention (“license it”) in return for royalty payments A patent can also be transferred by gift, will, or descent under a state’s intestate succession (no-will) laws B The Three Types of Patents There are three types of patents utility patents, design patents, and plant patents Utility Patents: A utility patent, the most common type of patent, covers inventions... damages from those who do so For example, 14 NOLO’S PATENTS FOR BEGINNERS copyright law gives an author offensive rights against anyone who copies her book without permission • Trade Secret Law protects confidential business information that gives a business a competitive business advantage over its competitors for example, manufacturing processes, magic techniques, and formulae • Unfair Competition... Resources 182 B Patents and Intellectual Property Resources 183 C Working With an Attorney 185 Glossary Index Introduction A Organization of Text 2 B Icons Used in This Book 3 2 T NOLO’S PATENTS FOR BEGINNERS he principles of patent protection have changed little since 1790 If you devise a novel invention and qualify for a patent, you can, for a limited time,... more detail in Chapters 5 and 6, and information about the PTO can be accessed online at www.uspto.gov or by writing to the Commissioner for Patents, P.O Box 1450, Alexandria, VA 22313 Until recently, utility patents were granted for a period of 17 years, assuming required maintenance fees were paid However, as a result of a change in patent laws, utility and plant patents issuing from applications filed... problems This icon indicates that the information is a useful tip This icon refers you to helpful books or other resources 4 NOLO’S PATENTS FOR BEGINNERS The Proposed Patent Act of 2005 At the time of publication of this edition, Congress was considering, but had not yet approved, a substantial reform of patent laws You can track the progress of the patent reform legislation (H.R 2795) at the Thomas... Rights and Registration 16 3 Copyright Compared With Utility Patents 17 4 Copyright Compared With Design Patents 17 J Trade Secrets 18 1 What Is a Trade Secret? 18 2 Acquiring and Maintaining Trade Secret Rights 19 3 Trade Secrets Compared With Patents 19 8 NOLO’S PATENTS FOR BEGINNERS 4 Loss of Trade Secret Rights As a Result of 18-Month Publication . Book 3 2 NOLO’S PATENTS FOR BEGINNERS T he principles of patent protection have changed little since 1790. If you devise a novel invention and qualify for a patent, you can, for a limited time, prevent. explosive growth in biotechnology, information exchange, and the advent of business method and software patents has resulted in more patents being issued than ever before. Patents are now considered an integral. world of patents, we have created a compact modern patent guide that explains patent law and provides clear instructions for deciphering and searching for patents. This book is intended for use