USPTO Annual Reports

By Debby Winters

In 2015 the United States Patent and Trademark Office (PTO) has made great strides in “leading positive change in the rapidly evolving intellectual property system” and reports that it has “reduced the pendency of unexamined patent applications, established new programs and initiatives, and proactively engaged with the public.”

To show its accomplishments, the PTO has released its 2015 Performance and Accountability Report (PAR), along with A Citizen’s Guide to the United States Patent and Trademark Office.  From this link, you can download both for  2015 as well as for previous years.

To help you see how 2015 compares to previous years in chart form, Dennis Crouch, in his blog Patently-O from Dec. 15, 2015 entitled “Three Charts from the USPTO 2015 Annual Report, has compared  the numbers for Patents Issued, Patents Pending, and Provisional Applications Filed.  The take away from these charts is that non-US residents continue to outnumber US residents in the number of patents issued, and that the number of provisional patent applications filed over the past few years, as well as the number of applications pending has evened out rather than continuing to climb.

It will be interesting to see how 2016 compares!

The Provisional Patent Application: What You Need to Know

By Debby Winters

An applicant can use a provisional patent application (PPA) as a way to secure a filing date similar to the way of securing the filing date with a non-provisional application, but with the PPA an inventor can avoiding much of the costs associated with the filing and prosecution of a non-provisional patent application. However, since the PPA never turns into a patent unless a non-provisional patent application is filed, the costs are not really avoided, but only postponed.

More specifically, if a non-provisional application is filed within one year from the filing date of a PPA, the non-provisional application may claim the benefit of the filing date of the PPA. Not only does the PPA avoid the cost of securing the filing date, but it also avoids the costs of prosecution of the patent application since the PPA is not examined.  Further, because a PPA is not made public unless its application number is noted in a later-published application or patent, the failure by an applicant to file a non-provisional application based on his/her PPA will not lead to public disclosure of his/her invention.

A PPA essentially gives an applicant an additional year to experiment, perfect an invention, find financial backers, determine sales potential, find interested parties for licensing, etc. before filing the non-provisional application.  However, there are no extensions on the one-year time limit for filing a non-provisional application claiming benefit of a PPA filing date.  By law, either you file a non-provisional application within a year or you lose the benefit of the filing date.

To summarize, here are the 10 basic facts all inventors should know about PPAs.

  1. A PPA expires after one year.
  2. You cannot extend a PPA.
  3. You cannot renew a PPA.
  4. A PPA will never become a patent.
  5. You cannot file a design PPA.
  6. The USPTO does not examine PPAs .
  7. The USPTO does not conduct a prior art search on PPAs.
  8. The USPTO does review a PPAs to make sure it meets the minimum filing requirements.
  9. PPAs are not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application).
  10. You can use the term “patent pending” for the duration of the one-year pendency of a PPA.

Premature Disclosures of Inventions on Social Media Websites

By Debby Winters

As social media becomes increasingly more popular, it is essential that companies and inventors avoid inadvertent disclosures of their inventions on social media networks and the company’s website. I have a client who realized this a bit too late. The company posted a Youtube video on the invention to spark interest and promptly filed a provisional patent application. However, we were not ready to file the utility application within the years’ time and had to file a new provisional patent application. This means more than one year lapsed between posting the video and the subsequent provisional patent application filing. We are now working to find a solution to this problem.

Because social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations, we must adapt in our thinking about public disclosures.  Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason.  If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.

While there are no cases deciding whether Youtube videos constituting a public disclosure, US Patent and Trademark Office Examiner training videos suggest that the provision covering this includes “YouTube videos, Website, and other on-line material”.  Accordingly, if an inventor discusses a new invention on a social media website or even on the company’s website, and that invention is copied by a second person (the deriver), who then files a patent application based on that invention disclosed on the web, the original inventor may lose the rights to any subsequent patent that is issued based on the deriver’s filed application.

However, all may not be lost for the original inventor.  The rights of the original inventor may be protected thanks to an exception.  The exception is what we term the one year rule. This rule gives the inventor one year from the disclosure to file a US application. A glaring issue with the “exception” is what exactly constitutes a “disclosure.”  For example, if the company simply makes a broad announcement of the invention, without any detailed discussions or descriptions, would that “disclosure” be sufficient to allow one of ordinary skill in the art to develop that invention?  In the current environment where much innovation and improvement is centered on facilitating a user’s interface with an electronic device, it is possible that disclosure of minor contemplated ‘tweaks’ to an interface would be sufficient disclosure to enable one skilled in the art to craft and file a complete patent application on the improvement.  Some of the lack of clarity lies in the fact that the granting clause refers to “descriptions” of the invention, whereas the exceptions conferring a grace period refer to “disclosures.”    Until these questions are answered by inevitable litigation proceedings, companies would be wise to revisit their social media and website policies and ensure their IP rights remain protected from the outset.

Perhaps for information that is for an “up and coming” product, companies or individuals can request additional information before such information will be made available on the web.  Some safeguards should be in place to take advantage of the marketing benefits of web disclosure while preventing a deemed public disclosure. Without any precautions, if an inventor or unauthorized employee of a company inadvertently discloses an invention on social media networks, and does not file an application based on that disclosure within a year, a second inventor, or deriver, who obtains that disclosure may file an application based on that disclosure, or may modify the disclosure and file an application based on the modified disclosure.  The filed application would then be considered prior art against a subsequent application filed by the original inventor. Or if the original inventor does not file within one year of the inadvertent disclosure, the original inventor may lose all of its rights.

Inventors and companies ideally should file patent applications prior to making any disclosures on social media websites or on the company’s website.  This protects both U.S. patent rights and patent rights in foreign jurisdictions.  At a minimum, a detailed and enabling provisional application should be filed outlining the basic aspects of the invention, and should be followed up by filing a non-provisional application within a year of the filing of the provisional application.  This is particularly important in instances where the company intends to obtain patent protection in foreign jurisdictions.

It is imperative that companies regularly and carefully examine their technology portfolios and ascertain the importance of each invention.  Detailed provisional applications should be filed quickly for inventions that are of great importance to the company, and applications for which foreign patent protection would be sought.  The company has to ensure that a non-provisional application is filed at the U.S.P.T.O. within one-year of the provisional application.

For less important inventions, and for inventions that will not be pursued in foreign jurisdictions, disclosures may be made as a defensive maneuver.  In other words, a company may decide to disclose particular inventions to preempt protection of a similar invention by a competing company.

Companies should also ensure that employees and investors are aware of the detrimental effects that may result from the inadvertent disclosures of company innovations on social media networks.  In addition to having their employees and investors sign confidentially agreements, extra vigilance should be taken for casual disclosures via social media, the privacy of which cannot be guaranteed.

 

How do you know if your idea is truly new and can be patented?

By Debby Winters

Clients frequently come to me with the question “how do I know if my idea is truly new and can be patented?” The standard and easy response that you will get from most patent attorneys will probably be “hire our firm to do a patentability or prior art search and we can tell you” but in my opinion this is not the proper answer. I tell my clients that the answer is more complicated than that as there are many factors to consider, and all on a case by case basis.

While conducting a patentability search and a prior art search is extremely valuable, it is not the be all and end all that many patent attorneys portray it to be as many times there are key articles or other patents that are missed. This means that despite best efforts, and some very smart people using very expensive searching tools, it is nearly impossible to figure out if your idea is truly new or novel. Chances are that there is someone somewhere around the world who has invented the same thing or something very close to it. It’s very hard to find that out, even with advanced searching technology. However, the benefits you receive from the search can be valuable in many other ways.

But how do you truly know if your idea is new? The response I gave to this question is that you can’t ever know for certain but if you do a good patent search and combine that with an internet search using Google and other search engines that have large information databases, you can get a good feel for how new your invention is, BUT there are never guarantees. Hopefully this search will give you enough information to justify your patent filing but I would never bet any money that your idea is truly new or novel on the fact that a patent search did not find any identical inventions. My basic premise is always that the lack of finding something does not prove that it does not exist.

The patent search before you file your patent is your first indication of how new your idea may be. The second test will come as you go through the patent prosecution process and the US Patent Office will do its own search. Usually that search will pick up a few things that your professional search missed. Most of the time you can convince the patent examiner that your idea is different from the similar inventions that their search found.

The last and final test will be a “cease and desist” letter or a lawsuit saying that you are infringing on the patent someone else already has. This is often scary for people to hear but the good news is that if you are successful enough to get these types of letters then this usually means your invention is doing well in the marketplace and you should have enough money to defend your patent.

The bottom line is there is so much information out there and so many people doing so many things around the world that it is nearly impossible to know if any idea is truly new and novel. The best we can hope for is a good enough patent search upfront to help us draft our patent in a way that will get it allowed by the patent office. Nobody truly knows if their invention is new and novel until either the patent office certifies that it is with an issued patent, and even then the patent office may have missed something.

Ensuring Clear Title To Your Intellectual Property When Crowdfunding

By Debby Winters

Let’s start with the basics. What is “crowdfunding” and why is everyone talking about it? Crowdfunding is a way of raising capital from a large number of small donors. The number of crowdfunding portals available is expected to grow rapidly now that equity-based crowdfunding investments have become legal. This allows companies to sell up to $1 million of securities annually. Crowdfunding presents an exciting opportunity to raise money or to pre-sell a product while building product buzz and an engaged customer base.

But here’s the problem when it comes to your intellectual property. To engage the crowd, a large amount of information about the project is shared with the public. If this information sharing includes previously confidential technological details, it could be considered a public disclosure under U.S. patent laws, which could trigger patent filing deadlines.

Those using crowdfunding (either donation-based or equity-based) must be mindful of these filing deadlines to ensure they do not jeopardize their intellectual property rights. This is particularly true for crowdfund issuers who have used government funding or resources while developing their ideas, as they may be subject to the Bayh-Dole Act (BDA). The BDA allows government contractors to elect to retain title to an invention that was created with the aid of government funding, but only if they follow specific steps, in a timely fashion. Crowdfund issuers who have used government funding must ensure that their crowdfund offerings comply with the requirements of the BDA, particularly in light of the recent amendments to the BDA and patent laws affected by the America Invents Act (AIA) patent reforms.

A public crowdfunding disclosure may have an impact on the timing of two BDA requirements: 202(c)(2), the written election to retain title, and 202(c)(3), the agreement to file patent applications covering the subject invention before statutory bars. The deadline for electing to retain title to an invention under the BDA is two years after disclosing the invention to the government. However, this deadline may be moved up significantly by a public disclosure of the invention, including, in many cases, the disclosures associated with a crowdfund offering.

The BDA provides that if the AIA’s one-year grace period for filing a patent application would end before the BDA’s two-year grace period for electing to retain invention rights, the time for written election to maintain invention rights may be shortened by up to 60 days before the end of the AIA’s one-year grace period. Failure to act within the allotted time period could lead to forfeiture of rights to retain title to the invention.

Crowdfund issuers also should be wary of the AIA’s one-year grace period for filing patent applications. Because of this switch to first to file, inventors will no longer be able to “swear behind” art developed between an inventor’s date of invention and the patent application filing date. Thus, to avoid this potentially invalidating art, crowdfund issuers should file applications and elect rights to an invention as soon as possible and not rely on the one-year grace period for filing a patent application.

Additionally, crowdfund issuers must take care to disclose all required information to potential investors. For those subject to the BDA, this will include notifying investors about all rights that the government has or may have to the invention. This is particularly true if the company has not yet filed a patent application or has not yet made a written election to retain invention rights.

An investor may elect to purchase crowdfunded securities based on the perceived value of the technology described in the crowdfunding disclosure. However, if the company fails to follow the requirements of the BDA and does not properly elect to retain rights, the government, not the company, may obtain the patent rights to the disclosed technology. This may adversely affect the value of the securities and could trigger allegations of a material misstatement or omission.

Given the complexities of intellectual property ownership under the BDA, companies should take special precautions to ensure clean title their IP rights before they make a crowdfund offering. Here are some things to consider putting into practice:

• Once a federal agency is informed of an invention, the inventing entity should quickly follow the BDA procedures and make a written election to retain title to the invention. It should file a patent application as soon as possible, and under no circumstances should it file the application later than one year after any public disclosure.

• If the company will offer securities, it should elect to retain title to any IP that contributes to the basis for the valuation of a crowdfunding offering before the offering. This will help to ensure that the valuation properly reflects the company’s ownership of the invention.

• If the company cannot afford to file a patent application before raising funds, it should consider filing a provisional patent application as a filing date placeholder. Provisional applications can be less formal than regular patent applications and often can be filed using materials that already have been prepared for the crowdfunding disclosures. Provisional patent applications are an inexpensive way to preserve patent rights under the first-to-file system of the AIA.

• The crowdfunded security offering should clearly inform potential investors of the government’s rights or potential rights to the invention. Even if patent rights are elected in a timely fashion, the government still maintains certain rights under the BDA (e.g., “march-in” rights). Although these rights may be rarely used, they may still affect the company’s valuation and should be disclosed.

• Finally, the BDA only covers inventions made using government funding. To limit the BDA’s applicability, businesses should segregate out as much IP as possible by differentiating it from the subject matter covered by any government funding agreements.

Crowdfunding is a new and potentially powerful tool. Following these steps will help to ensure that a business has a clear title to its IP rights and that it has disclosed all necessary information to potential investors.

A Prior Art Search…to do or not to do?


By Debby Winters

Many individual inventors and small start-up company entrepreneurs ask if they should do a prior art search, or if they can forego that and save the money for the patent application itself. This is a tricky question to answer as many start-ups don’t have a lot of money BUT, the risk of filing the patent application when the invention might not be patentable could be costly too. Therefore, I usually recommend conducting the prior art search, but the timing of doing so might be important.

Many new inventors are surprised that they are not the only ones working on the same or a similar invention. The internet research they do, although limited, may convince them that they are the only ones working to solve this problem. A thorough prior art search is the only way to know for sure.

Think about the risks of not doing the prior art search prior to filing the application.

1-     The possibility of getting hit with an infringement lawsuit might be the mostly costly risk. These suits can be extremely expensive, even if you don’t get hit with a large damage award. There is a risk that you will not be able to afford to defend such a suit and that all of your hard work in developing the invention, getting it through the prototype stage, and getting it to market would be wasted. There is usually a significant monetary and time investment involved with these steps. There is also a risk that a court could issue an injunction that would prohibit you from making, using, selling, or offering the invention for sale.

2-     The prior art search can help in preparation of the patent application and potentially keep down costs during the prosecution stage. By knowing the closest prior art, the patent application and the claims may be prepared more strategically to take advantage of areas of patentability. Claims may be prepared that get close to the prior art without encroaching on it. It may be possible to develop arguments and strategies for convincing the patent examiner that the invention is non-obvious based on the prior art you uncovered. If you don’t do the prior art search prior to filing you won’t have this information under your belt when the examiner brings it up. Besides, if you find a patent that prevents you from obtaining yours, you can always consider licensing the technology you need to still market your invention. Better to find out now rather than later.

Many times inventors complain that anything you uncover that is material to the invention must be disclosed to the Patent Office. While this seems like a disadvantage, the patent examiner will find this anyway. The patent examiners are very good at finding relevant, as well as irrelevant prior art. A route I typically recommend is to file a provisional patent application, which costs much less than a full utility application, to claim your priority date. You then have time to do the prior art search and ensure that you want to move forward. This also gives you the opportunity to raise more capital to pay for the regular application and the opportunity to draft the application to “work around” any pesky prior art.

If you have questions, please feel free to contact me. As a licensed patent attorney, I will see how I can help.

Can you re-file a provisional patent application?

By Debby Winters

I quite often get questions about what are the options if your provisional patent application is going to expire (remember they only last for 12 months) and you are not ready to commit to a full non-provisional patent application.

The first question is always “Can I re-file a provisional patent application?” and the answer to this is that it depends.  It depends on if you have had a public disclosure or offer for sale.  Patent attorneys call this a “102 date” since this triggers certain patent laws and you may have done something to block yourself from getting  a patent.  For example, posting a video on Youtube showing your invention on March 1, 2012 may get a “102 date” of March 1, 2012 because that is the date the public first had access to see your invention.

If your provisional patent application is about to expire you have several options:

(1) If your idea is still secret and has not been published or offered for sale (i.e. no “102 date”) then you should have the option to re-file another provisional patent application.  In theory you could do this over and over again as long as your invention stays secret.  Of course this is very risky now that the United States is a “first to file” country because someone else may invent the same or similar thing and if they get their real patent filed before you, you may lose out on your chance to patent it.

(2) If your idea is no longer secret since you may have told people about it, published it, or offered it for sale (i.e. you created a “102 date”) you may be able to still file a provisional patent application as long as it’s within 1-year from that 102 date.

(3) If your 102 date was more than a year ago, you may be out of luck and the best you could do is try to come up with an improvement or tweak to your invention and file a regular utility patent application on that.

(4) You can file a full non-provisional patent application within 12 months from the date you filed your provisional patent application.  Sometimes if people have a 102 date after they filed their provisional this is the best option for them.

(5) You can do nothing and let your provisional patent application expire.  A lot of great products do well in the market without any patent protection.