The following was presented at the Joint Patent Practice Seminar, April 2014

1. Competing Doctrines: Double Patenting vs Restriction

According to the religious lore of Catholicism, St. Jude is regarded as the patron of difficult cases. He certainly lives up to his reputation in the case of St. Jude Medical, Inc. et al. v. Access Cloture, Inc., decided by the Federal Circuit on last year’s 9-11 anniversary.

The Fed Circuit had the unenviable task of grappling with the so-called “Safe Harbor” provision of 35 U.S.C. §121. The Safe Harbor provision, the Court observes with tongue-in-cheek, is “not a model of clarity”. In fact, it’s an example of one of those interminable sentences that could only have been penned by someone steeped in the discipline of patent claims drafting.  It reads as follows:

A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them if the divisional application is filed before the issuance of the patent on the other application.

Short of invoking the Saint’s miraculous intervention, a bit of background on the genesis of this provision is definitely in order here if we are to set a course for the Safe Harbor through the fog of its cryptic prose. Enacted as part of the 1952 Patent Act, it was intended to reconcile a conflict between two fundamental principles of patent law: that there shall be only one patent per invention, and that there shall be only one invention per patent. These two principles express themselves, respectively, in the doctrines pertaining to double patenting and claims restriction practice.

2. Safe Harbor as Collision Insurance

Each of these two competing doctrines has its own equity-based policy underpinnings. On one hand, the proscription against double patenting aims at preventing the over-extension of patent protection by filing successive applications based on obvious variants of the same invention. On the other hand, the imposition of restriction requirements ensures that claims for patentably distinct inventions are prosecuted in separate applications. In a perfect world, these two policies would never clash, but in the real world – as all of us are painfully aware – patent examiners and judges are fallible, and their opinions on what are or are not patentably distinct inventions are apt to differ.

By way of example, an examiner requires that the applicant elect between claims 1-10 and claims 11-20, based on his/her non-appealable judgment that they are directed to two different inventions. The applicant dutifully elects claims 1-10 and then files a divisional application based on claims 11-20. Patents issue on both applications, but in subsequent infringement litigation, the defense of invalidity based on double patenting is raised, and the court concludes that the two groups of claims are not patentably distinct. Despite having steered its applications on the only course allowed by the PTO, the patentee suffers a collision that sinks its claims and works a forfeiture of its rights.

To prevent such manifest injustices, Congress saw fit to create the Safe Harbor, in which restriction-driven divisional applications and their progeny would not encounter the perils of double patenting on the open sea. But the compass of the Harbor needs to be carefully circumscribed, lest it become a channel for by-passing the double patenting proscription altogether. In the St. Jude appeal, the Fed Circuit had the opportunity to set out some marker buoys to better define the limits of the Harbor. Let’s consider how they went about doing that.

Part 2: Drawing Lines of Demarcation »

If you have great ideas for inventions but don’t yet have the money for full patent protection, filing a provisional patent will give you 12 months of patent ownership barring competitors from patenting your idea during that period. While you have provisional patent rights, you can continue the process of obtaining a patent while selling your patented product free from worries about theft or patent infringement. It is a great way to test the waters of your new idea before committing to pay for full patent rights.

In order to get a provisional patent, a provisional patent application must be filled out following a comprehensive USPTO patentability search guaranteeing your invention has not already been patented. An experienced patent attorney can assess the specifics of your invention and fill out a provisional patent application to highlight the uniqueness and patentability of your idea, while continuing to guarantee you intellectual property protection.

Filing a provisional patent takes place much as filing a non-provisional patent application would, except the claims section of the patent is not included. This makes it easier to draw up an application without honing in on the most specific details of the patent and the aspects which require patent protection, but it also leaves the patent application open to holes and gaps that can be exploited by competitors looking to sell a similar product. A provisional patent also only lasts one year.

There are no specific forms for provisional patent applications that need to be filled out – a provisional patent application, however, must follow the template of existing patent applications, with a section of specifications of the patent, diagrams and an abstract. For examples of existing patents, visit the patent examples section.

All patents are filed through the United States Patent and Trademark Office (USPTO). A patent application must be much more involved than the general patent idea itself, and the patent idea must be broken down into a number of patent claims that detail (or ‘claim’) the unique features of the particular patent. Writing patent claims that will be accepted by the USPTO patent examiners often requires an experienced patent attorney or patent professional, as a patent examiner will often contest or reject a patent application if the claims are not sufficiently detailed or clear on what sets the new patent apart from existing patents (the ‘prior art’).

In addition to patent claims, a patent application must include diagrams or drawings, if applicable, patent specifications – which details the invention’s functionality, where it fits into the prior art, why it is unique, and what it can be applied towards – and the necessary fees associated with filing a patent. Descriptions of the drawings, summaries of the invention, references to other prior art of the invention and patent application abstracts are also necessary for a complete patent application. These materials are then submitted to the USPTO.

The patent application process is an involved one, usually taking no less than a year and often up to three years, depending on what kind of patent it is and the kind of office actions the patent office gives on the patent application. A patent application doesn’t begin with patent application forms, but rather by creating an application that looks just like the registered patents in the patents section of the website. The application to the USPTO includes the specifications of the patent, the claims and the diagrams and drawings, as well as any summaries, explanations or abstracts that would accompany these sections.

For assistance in drawing up your patent application for submission to the USPTO, please feel free to get in touch with us at (908)-879-0091.

Worried about the cost of full patent protection but still planning to secure your patent rights on a product? A provisional patent gives protections for up to a year, which is an excellent way to try out a new product or invention you have before committing to applying for a non-provisional patent with full patent protections.

Provisional patent applications are written without claims, which means that they can be done without the level of technical and legal expertise that a typical non provisional patent can – but, on the other hand, the lack of claims in a provisional patent application also allows for greater contestation and workarounds on your patent idea, allowing competitors to effectively steal your patent. Provisional patent applications should be written with care – only an experienced patent attorney can guarantee that your provisional or non-provisional patent applications are detailed and fine-tuned enough to give you effective patent protection.

As a provisional patent application is essentially the same thing as a regular patent application but without the ‘claims’ section, any of the patent examples in the patents section of the site will give you a good idea of what a provisional patent application should look like. Your patent will likely need to have the same level of detail as you see in these example patents, though the details will be specific to your own area of specialization.

A business idea can be patented as long as it details an actual, specific business method. Such a business method patent must be detailed and practicable. An idea to use monkeys to rewrite Shakespeare books, then, would fail to qualify for a business method patent, as it is far too general and, mostly likely, impossible or impracticable.

Thus, you don’t actually have to have a specific product that you are selling yet to obtain a patent, and often business process patents are the way to go in these cases. However, your idea must be possible, practical and purposeful. You must be able to demonstrate that your patent idea can work and has a specific function in your business order to patent your idea. Thus it is often best if you are able to concretely test the practicality and use of your business idea, though this is neither needed nor accepted as part of the patent application process.

If you have doubts about whether your idea is specific or unique enough to qualify for patentability, it is best to discuss your idea with an experienced patent attorney before committing yourself to costly patent application fees and involved patentability searches. For a free consultation on your product patent idea, call 908-879-0091.

Suppose you have a great idea on how to solve world hunger. Can you patent an idea like this?

It depends, but probably not. You don’t need to have a physical invention to patent something – a patent is often an idea before it is an actual product, and a process can also be patented. But a patent must refer to something practical, functional, and above all, specific. Patents could include ideas for inventions that might cure world hunger – like a new disease-resistant grain or a more efficient threshing machine – or a specific process that does so – like a new business process for small farms that enables them to produce more food – but not general, non-specific solutions, like giving more foreign aid to poor countries.

Pure concepts are also not patentable – E=MC², for example. The idea must ultimately be tangible and used for a practical purpose. One of major requirements for a patent, in fact, is that the patent has a useful function and actually performs that function.

Therefore, a patent on an idea is not possible unless the idea is something specific and practicable, like a patent on a business process. Even if you have an ‘idea for an invention’, that idea has to be specific. You can’t just come up with an idea for a patent without actually knowing how that patent will function. A detailed mechanical and technical understanding of your patent idea is necessary to have a successful patent application.

Do you have a product you have already been selling and marketing? It is highly recommended that you look into patenting it before your competitors have a chance to take your product and deprive you of the right to patent it!

The process for an existing product is no different than the ordinary patent process. However, if information about your product invention has been publicized for over a year, and especially if it has been sold by yourself or by competitors, you may actually be barred from patenting your invention. A product must not be in general use to be patentable, and release of information about your product or ongoing sales can prevent you from securing protection from future patent infringement.

Worried that the patent process period will take too long and deprive you of potential profit while you wait for your new product to be patented? There is no reason to worry – while your patent application is being processed, your patent will be protected under a ‘patent pending’ classification, guaranteeing you protection from patent infringement from competitors while also enabling you to continue selling your product.

In summary, if it is a product which exists already you might be too late to get a patent on it. Products and goods in use for more than a year are disqualified from being patented. Note also that a patent might apply to a product if it is a novel invention, software, good, etc. – but if it is simply a redesign of an existing invention, it may only qualify for a trademark, not a full-blown patent, as it is does not actually perform a new function as is required for a successful patent. If you have a new product that hasn’t been patented yet, contact us to find out if you still have the ability to patent it. Waiting too long may allow your competitors to take your invention idea.

Patents are designed to give you exclusive intellectual property rights over your patented invention for a long period of time, thus preventing competitors from stealing your product and making profit off of it.

Typically a patent will last 20 years from the date you file for a patent in the case of plant and utility patents and 14 years from the date you file for a patent in the case of design patents (see ‘Choosing the right kind of patent protection’). As utility patent applications are by far the most common, your invention will likely receive patent protection for 20 years.

If you are filing a provisional patent, your patent protection will last only 12 months. This is a good option if you would like more time to pursue full patent rights or you want to test the commercial waters to see if it will be profitable to patent your invention. Note that you also receive limited invention protection (i.e. “patent pending”) while pursuing full patent rights, so you are secured against patent infringement during the patent process.

Official types of patents include Utility Patents, Design Patents, Plant Patents and Provisional Patents.

Utility Patents are the most common, and include most ‘invention’ patents: mechanical patents, electrical patents, chemical patents, pharmaceutical patents, software patents and biotechnology patents. These include patents with or without moving, interacting parts – a shovel would still fit into the utility section, just as would a car engine.

Design Patents are ornamental designs of functional items, like a new type of fabric pattern (a new type of fabric, on the other hand, would be a utility pattern and a new graphic pattern or logo for commercial purposes would be a trademark). Plant Patents are patents for newly developed plant varieties.

For more information on provisional patents, see the section on “What is a provisional patent?”

Logo trademarks can guarantee that the trademarked logo used for your business cannot be used by a competing business. A logo may include words and typographical elements, but must include graphical elements – a logo trademark cannot consist of plain text and phrases alone. As a logo always includes such stylized graphical elements, the classification for trademarking a logo will always be a stylized/design mark.