Lately, we have been asked on a couple of occasions to provide a roadmap for our clients to follow to protect their current and developing intellectual property.
What follows is a sampling of the information we have provided. We hope you find this helpful.
As an initial matter, the appropriate agreements need to be in place. Any vendors, consultants, programmers, and the like, that are engaged by the entity should sign a Non-Disclosure Agreement. In general, these are straightforward documents; however, they should always be reviewed to ensure that they are applicable to the particular entity signing them as well as to the particular situation. In addition, agreements should be executed with any of the above-described entities that obligate them to assign any and all intellectual property rights regarding the technology they are working on or developing on your behalf. This becomes particularly important with respect to patents.
When a patent application is filed, the inventors must be disclosed to the United States Patent and Trademark Office (PTO). Inventorship as it pertains to patents has a legal definition as follows.
Anyone that materially contributes to any claim in a patent, must be named as an inventor.
Accordingly, if a programmer or another makes such a contribution, they will be considered to be an inventor. Another tenet of patent law is that each inventor owns a 100% undivided interest in the patent. Therefore, every inventor is free to do whatever he/she wishes with the patent. This is why agreements obligating anyone working for you or on your behalf, obligating them to assign their inventions related to your technology, must be executed.
Regarding software and programmers, the intellectual property concerned is both patent and copyright since software is subject to both. With respect to copyright, the author of a work (including software code) owns the copyright the moment the work is affixed in some tangible form. A Copyright Registration is not required for ownership rights to inure. Accordingly, absent a written agreement to the contrary, a programmer would own the copyright to the code he creates. As such, "work for hire" agreements need to be in place with anyone doing any programming.
Another area of concern with respect to software is whether or not the programmers have incorporated any Open Source code into the software. If they have, we must check where they got the open source code from and what the licensing terms for using it are. There is some open source code that requires that any software that incorporates it be made available to the public free of charge.
Once the appropriate agreements are in place, the copyrights for the software should be registered.
As you may be aware, there are over seven million issued patents. Accordingly, if you have recently introduced products to the market place, or are about to, it is important that a patent search be conducted on the commercial products in order to ascertain whether or not they infringe any issued patents.
We should also file for patent protection if the search indicates that a patent may be possible on the products. It is imperative to understand that public disclosure, sale, or offers for sale of an invention starts a clock ticking in the United States. An applicant for a patent has one year from the date of first public disclosure, sale, or offer for sale to file a patent application in the United States. Failure to do so results in the invention being dedicated to the public. That same public disclosure, sale, or offer for sale, destroys the ability to patent an invention in virtually every other country in the world (there is no one-year grace period). Based on the foregoing, it is important to use Non-Disclosure Agreements, and preferably to file for patent protection prior to making a disclosure of an invention.
Provisional patent applications are a useful tool to economically protect your inventions in the early stages or when a public disclosure is imminent. A provisional patent application allows an applicant to establish a filing date without having to incur the up-front expense of preparing a "full-blown" non-provisional patent application. Instead, the provisional patent application requires that a disclosure describing the invention along with a drawing, if necessary, be prepared and filed. No claims, background, or summary of the invention are necessary in filing a provisional patent application.
The provisional patent application has a life of exactly one year from the filing date. At the end of, or prior to the expiration of, the one-year period, the applicant must convert the provisional application into a non-provisional application. In addition, foreign filings must also be made at the end of this one-year period. If the applicant does not convert the application into a non-provisional patent application, the provisional patent application automatically becomes abandoned.
The disclosure filed with the provisional patent application must meet the enablement requirements of the patent statute. In other words, the disclosure must contain sufficient detail in order to put a person of ordinary skill in the art to which the invention pertains in the position of being able to make the invention without undo experimentation. Therefore, it behooves an applicant intending to file a provisional application to include as much detail as he/she is currently in possession of.
When the provisional application is converted to a non-provisional patent application, no new matter may be added to the non-provisional patent application. This means that if subject matter is disclosed in the non-provisional patent application which was not disclosed in the provisional patent application, the applicant will end up with two filing dates. The first filing date will be applicable to the subject matter disclosed in the provisional patent application while the second filing date will pertain to any new matter disclosed in the non-provisional patent application.
Provisional patent applications are not examined by the U.S. Patent and Trademark Office and merely act as place holders for reserving an earlier filing date. However, if the non-provisional patent application derived from a provisional application matures into a patent and is litigated, the provisional patent application becomes part of the file history of the patent. Finally, a provisional patent application can be used to obtain an early filing date, at minimal expense, and also to explore the market for the invention during the pendency of the provisional patent application. If at the end of twelve months, it does not appear that the invention will be profitable, the applicant can simply allow the provisional patent application to go abandoned.
On an ongoing basis, it is recommended that provisional patent applications be filed early in the invention/product development process and to file follow up provisionals as a product is developed. At the end of the one-year provisional period of the earliest filed application, or earlier, the provisionals can be combined and filed as a non-provisional patent application. At the same time, foreign filing decisions need to be made and applications filed. The foreign filings can take one of several forms. Patent protection can be applied for in desired countries individually, regional patent applications can be filed or a PCT (Patent Cooperation Treaty) application may be filed.
With respect to foreign filing, I would recommend filing PCT (Patent Cooperation Treaty) applications. A PCT application allows one to designate virtually all foreign countries while delaying the decision, and the expense, for a substantial period of time regarding exactly which countries patent protection should be sought in.
As stated above, on or before the one-year anniversary of filing a provisional patent application, a non-provisional patent application must be filed. The non-provisional patent application is the "real thing" patent application since it will be critically examined in Washington, D.C. by the United States Patent and Trademark Office. The non-provisional application contains a specification which provides a complete, detailed description of the invention, its surrounding environment, its advantages over prior art, and one or more preferred embodiments. Drawings are included, when necessary, to ensure a thorough understanding of the invention. The specification concludes with one or more claims which serve to completely and precisely describe the scope of the invention for which a patent grant is sought.
The completed patent application, along with a filing fee, is forwarded to the United States Patent and Trademark Office (USPTO) in Washington, D.C. for examination. If the subject matter of the application is judged patentable by the USPTO, a patent will be granted.
In executing the patent application, the inventor is asked to sign a Declaration, Power of Attorney, and Petition. In order to record that the Company owns the patent application, patent and the inventions described and claimed therein, the inventor also executes at the time of filing the patent application, an Assignment. The Assignment is then recorded in the United States Patent and Trademark Office.
The Patent Office rules require us to submit all documentary prior art of which we are aware, during the course of the prosecution of your application. The manner in which this information is conveyed to the PTO is via an Information Disclosure Statement (IDS).
Once the application is received at the PTO, it is assigned to an Examiner who then conducts a search of the Examiner's prior art which consists of all issued U.S. patents as well as some foreign patents and publications. If the Examiner uncovers prior art relevant to the claimed subject matter of your patent application, an Office Action will issue that typically includes a rejection of one or more of the claims in the application and the Examiner's reasons for this rejection. In addition to rejecting claims over prior art located by the Examiner, the Examiner can also reject an application for other reasons such as informalities, and for disclosing and claiming more than one invention. You should bear in mind that it is not uncommon, and in fact more likely than not, that the Examiner will cite issued patents against your application that were not uncovered in any search we performed for you prior to filing the application. This is due in part to the fact that what the Examiner finds relevant may be quite different from what was relevant when the search was made. Furthermore, the documents contained in the Examiner's search rooms are more comprehensive and complete than those available in the public search rooms. It is also possible that applications issued as patents subsequent to our search. Upon receipt of an Office Action from the Examiner, counsel will review it and report its receipt as well as their recommendations.
In order to continue with the prosecution of the patent application, we must respond to the Office Action within a given time frame, or the application goes abandoned. An applicant can usually expect two Office Actions during the prosecution of the patent application. However, bear in mind that it is also possible that the application will issue as a patent without any Office Actions. If we are successful in responding to the Office Action submitted by the Examiner and we receive a Notice of Allowance indicating that the patent application will issue as a U.S. patent, formal drawings must be prepared as well as payment of the issue fee to the Patent Office. Once the patent issues, a maintenance fee must be paid periodically. In the United States, in order to keep a patent active, maintenance fees must be paid at 3.5, 7.5 and 11.5 years.
At times, we are unable to convince an Examiner that the claims in a patent application are allowable over the prior art applied by him/her. In this instance, we can either cease any further prosecution of the application which would result in its abandonment, or can appeal to the United States Board of Patent Appeals and Interferences. If an applicant decides to appeal to the board, a Notice of Appeal must first be filed. Once a notice is filed, an applicant has two months to submit an Appeal Brief to the board. The brief goes first to the Examiner involved in the case, and he is given an opportunity to answer. Depending on his answer, the applicant can either file a Reply Brief revisiting the issues raised by the Examiner, or do nothing and let the Board decide based on the originally filed Appeal and Examiner's Answer. If a favorable decision is handed down from the Board, the application will then issue as a patent. If an unfavorable decision is handed down, the applicant has two options - either allow the application to go abandoned or appeal to the District Court in Washington or the Court of Appeals for the Federal Circuit.
Maintaining a record of invention dates and what was invented is also very important. Inventors should keep engineering notebooks that document the invention process from conception. These notebooks must be maintained in a safe location. Each page of the notebook must be witnessed by having someone other than the inventor sign and date the page and then under their signature the words "Read and Understood" should appear. The person signing the pages should also execute a Non-Disclosure Agreement. The United States is the only country that employs a "first-to-invent" system. This means that if a patent issues and another entity can prove that it invented first, the relevant claims in the patent would be invalid.
These are some of the most commonly encountered issues and strategies. If you have any specific issues, please do not hesitate to contact us.
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