Patents

IP Gotchas: The Patent System

June 11, 2020

Many times Businesses form and thrive because of a revolutionary product like the smart phone, or because of a new service model like ride sharing. These products and services often include novel processes for solving old problems, or new and useful combinations of existing products. Sometimes no one thought to try it, or perhaps for many years everyone believed it couldn’t be done. Common misconceptions about the patent system can result in missed opportunities to jump-start growth, secure market share, and give a superior business model the chance to dominate the marketplace in the face of strong competition. Following are some “gotchas” related to the patent process that result in missed opportunities.

If I Patent It, I Can Build It: Not necessarily. It is possible to make the product you claim in your patent, and still infringe someone else’s patent. That’s because patents do not grant you the right to make and sell your product or service. Patents only grant you the right to stop others from making or selling your product. For example, Kerri has a patent on a cup, and Joe patents an improvement on the cup by adding a handle. Now Kerri has a patent on cups and Joe has a patent on cups with handles. Before Joe can make and sell cups with handles, he must obtain Kerri’s permission because he cannot make a cup with a handle without first making a cup. Kerri’s patent gives her the right to stop anyone from making cups of any kind, with or without handles.

I’ll Sell It First, Then Patent It Later: The first impulse for many entrepreneurs is to see if the product has market acceptance before proceeding with a patent process that may cost precious startup capital. The U.S. patent system still provides a year to file for patent protection after the first disclosure or offer for sale, but the U.S. system is unique in this regard. Rights can be lost when details are mentioned in public and then left out of the patent application by mistake. Also, any public disclosure means you will not be able to pursue patent protection on the concept anywhere else in the world. While this may be less of a concern to some businesses, it can become a serious obstacle to growth as the business takes off in other countries. With a little careful planning before that first disclosure, entrepreneurs and inventors should establish a road map through the patent system that fits their budget and gives them the best chance of retaining patent rights now that may soon become very valuable.

I’ll Keep My Patent a Secret: The patent system gives inventors the exclusive right to stop others from making, using, or selling their patented invention. In return, inventors are required to teach the world how to make the invention. This way others can study the drawings and description in the issued patent to quickly learn from the inventor and make improvements on the concept sooner, rather than later and thereby advance the overall state of the art more efficiently. Conversely, inventors that try to obtain a patent without disclosing the most important aspects of the invention may cripple their opportunities for obtaining viable patent protection in the U.S. and abroad. Furthermore, this approach may also destroy options for securing IP rights that might otherwise be available such as trade secret protection. Here again, there are several ways to address this issue, all of which are ideally considered early on as part of a cohesive IP strategy – preferably long before valuable IP rights are potentially lost.


Learn about Patents and Trademarks March 23 in Indianapolis

March 7, 2017

On March 23, 2017, there will be a free program at the Indianapolis Public Library (Central Library) on the Gender Gap in Patents followed by an educational training session to learn the basics about patents and the trademarks and what resources are available for you. Staff from the United States Patent and Trademark Office (USPTO) will be available to help answer your questions about your ideas and protecting your intellectual property.

You may register for the program here.

  • 12:30 PM – 1:00 PM — Registration
  • 1:10 PM – 2:00 PM — Keynote on Gender Gap in Patenting
  • 2:00 PM – 3:00 PM —Winning Strategies: IP Overview: How to Get Started: A Focus on Patents
  • 3:00 PM – 3:05 PM —Break
  • 3:05 PM – 3:55 PM —A Focus on Customer Service—USPTO Programs and Web Resources
  • 4:00 PM – 4:55 PM —Trademark and Branding Strategies
  • 5:00 PM – 5:30 PM —Limited One on One Sessions

  • USPTO Provides Statistics on Petition Pendency

    September 11, 2015

    The United States Patent and Trademark Office has launched a new website—the USPTO Patents Petitions Timeline. The new website provides the average pendency and success rates (over the past 12 months) for each type of petition that can be filed during the patent prosecution process. For example, petitions to correct patent term adjustment periods remain pending for nearly a year and have a success rate of 42%, while petitions to correct inventorship remain pending for roughly five months and are granted nearly 84% of the time. Not surprisingly, petitions for extensions of time during prosecution are quickly granted 100% of the time.

    The Patents Petitions Timeline will help practitioners and applicants make better strategical decisions on when to file a particular petition during prosecution or for the life of the issued patent. Moreover, much like the first office action predication available in PAIR, this provides some guidance as to the likely timing of a decision for the various petitions available.