Economic consideration and dissemination of information available on the Internet alone, whether alone, seeking assistance from invention submitting companies and other on-line legal solutions, can make their own intellectual property routes We will guide customers. In this article, we introduced a method to talk to clients about the risks and pitfalls of their own intellectual property rights, centered on patents, and tips for getting clients in the right way before and after the client's own things to do I will.
I have heard at least one advertisement about a service, such as Invent Help or LegalZoom, which allows an average person to create a legal document, unless you can not access the media (TV, print, radio, Internet). At low cost. In some instances, these services may promote their use to help the inventor try to obtain patent protection. Those services and other online information can provide the inventor with a low cost way to access the patent system, but by using these services patents are filled with inadvertent pitfalls There are cases. There are many potential pitfalls when trying to acquire / maintain patent protection without hiring lawyers, but in this article, it is important to note that misunderstandings concerning provisional patent applications, mis-written patent applications are more Everything that may get worse is mixed with marketing / commercialization and patent protection. These pitfalls can become severe to the extent that patent protection is lost from an excessively narrow patent scope.
A. Misunderstanding concerning provisional patent application
Some inventors try to utilize online services in particular, or try themselves when submitting a provisional patent application. There are various reasons the inventor can do. The main consideration is often costly - the fee paid to submit a provisional patent application to the US Patent and Trademark Office is low (less than $ 150 for small companies), the interim application to patent attorney / Depending on the complexity of the invention, it can sometimes be basic. In addition, the basic requirement for obtaining the filing date of the provisional patent application is not formal or particularly bothersome (ie there is no need to create complaints and no formal drawings need be created) , This allows you to follow yourself with low cost support of online services that encourage inventors to take this first. There are several pitfalls when engaging in their interim patent application process.
1. False belief that provisional patent application is patent
One pitfall to submit a provisional patent application without the assistance of a patent attorney / agent relates to a false belief of submitting a provisional patent application counterpart with patent protection. For example, at one time, at least one of these online services promoted the inventor to obtain a "provisional patent." However, provisional patent "provisional patent" application .
Once the provisional patent application is filed, the applicable location is stored in the priority line of the US Patent and Trademark Office. Thereafter, the applicant may have a period of up to one year from the filing to change the provisional application to a nonprovisional application and potentially receive the priority of the provisional application filing date. If a provisional application is not converted to a non-provisional application, the provisional application will expire and no patents will be issued. Unfortunately, an unwilling applicant either intends to submit a provisional patent application by itself, or submits a "provisional patent" using one of these services and has a patent for enforcement Protect by pure application. However, they have applications that have not been evaluated for patentability and are valid only for a limited time (up to one year). This leads to another pitfall. We can not recognize the need to change provisional application to nonprovisional application within one year after filing.
2. We do not recognize the necessity to revise provisional application within one year to benefit from the submission date
Again, the provisional patent application is good only for a limited time (up to 1 year). If the provisional application is not converted into a non provisional application, the provisional application will die in the grape. The invention is no longer in the "patent pending" state, and the inventor can not rely on reviving the application to gain protection.
If the inventor makes a provisional application by himself or with the help of an online service, the inventor can not recover the notice on the deadline for converting the provisional application into a nonprovisional application. Remembering the deadline date to the inventor, I do not know what I need to do to properly convert the provisional application. In contrast, if the inventor engages a patent attorney / agent in order to enforce a provisional application (or at least support the conversion process), the patent attorney / agent will adhere to the appropriate delivery date and generally in advance of the due date Submit a letter of reminder. The patent attorney / proxy should consider what is necessary to properly convert the provisional application, more specifically how to make claims, how to meet formal drawing requirements, It was included in the application. Therefore, the inventor knows the deadline for doing what it is necessary to do.
If the patent agent / agent approaches to aid in the transformation of its interim patent application it is important to ask questions on when the application was submitted and to understand the level (or lack of detail) of the details included in the application It is essential. This helps the attorney / agent to ensure that nonprovisional applications are submitted in a timely manner and are most likely to benefit from the priority filing date associated with the provisional application. This is linked to another pitfall that may arise for provisional and non-provisional patent applications (the risk of making an inappropriately written patent application).
B. Inappropriately written patent applications are almost the same as those without any application at all
A patent application using these services or another pitfall to submit a patent application Process Inappropriately written patent applications are possibly as bad as not having filed for the first time. There are many elements that can contribute to a patent application deemed "improperly written", but it does not describe the invention in sufficient detail, does not correctly claim the invention, details the prior art There are only a few things to do.
1. I can not explain the invention in sufficient detail
If the provisional application does not explain the invention and further details are added to the nonprovisional application describing the method of making / using the present invention in full detail and more fully describing the present invention, Will benefit from the filing date of the provisional application priority. This is a possible pitfall because the main advantage of submitting the provisional application is to obtain the filing date for priority purposes. If the inventor lost the earlier filing date, the inventor may not have submitted a provisional application at all.
This can also be a problem of its own nonprovisional patent application. If the present invention is described only at a very high level in a patent application, the full scope of the invention may not be included in the application. Correspondingly, when the United States Patent and Trademark Office is examining an application, the details that may be helpful in distinguishing the invention from the prior art are not included in the application, and a new application is newly filtered without filtering You can not add anything. Thus, lack of sufficient detail can be fatal to the potential success of patent applications. Also, even if it is deadly, the applicant may have to submit an additional application in order to include details related to patentability, so that the benefit of the filing date of the non provisional application and the priority of the provisional application Application Date Application.
2. I can not correctly claim the invention
Another area where pitfalls arise is related to assertions contained in nonprovisional applications. The patent claim legally determines the content of the invention (ie the scope and scope of the invention). The US Patent and Trademark Office will consider a request for a patent application in order to define the scope of protection of the invention. It is impossible unless it is not applicable to draft its assertion when it is not trained. In addition, some applicants may be able to draft claims and acquire patents, but they do not necessarily draft claims that provide effective patents and worthy protection scope. The result may be worse than if you do not have a patent at all.
Applicants are encouraged to represent a patent attorney / agent if they merely prepare claims related to a nonprovisional patent application and then negotiate the scope of claims with the patent examiner. The patent agent / agent is trained to draft the claims and understands the practices and procedures of the US Patent and Trademark Office. To have a good set of complaints in the issued patents will not only be those disclosed in the patent application but also because the infringement is determined based on whether all the restrictions on the patent claims are met or not You can make worthy patents valuable. If the claims are too narrow, potential infringers may be easier to design. Conversely, if the claim issued is too broad, the accused may invalidate the claim through courts or through procedures available in the US Patent and Trademark Office (ie reexamination, post-grant review) PGR) and Inter Part Review (IPR)).
3. Explain the prior art in detail
Regardless of whether someone has submitted a provisional or non-provisional patent application, the common trend for its own patent applicant is to describe a lot of details about the prior art and this kind of comment is in the United States It can often be disadvantageous when the Patent and Trademark Office later examines nonprovisional applications. Because the applicant's own admission to the prior art does not require the examiner to perform another search by the examiner.
A better way is to disclose relevant references through information disclosure statements while keeping the prior art (or background) section of the patent application to a minimum. A patent application merely indicates what is lacking in the prior art and it is only necessary to make arguments in situations where the invention is added or improved compared to the prior art. This makes it possible for the examiner to reduce the likelihood of issuing a rejection, in particular obviousness refusal, using the inventor's statement of patent application's own statement.
C. Marketing / Commercialization invention
In many cases, clients will not be looking at attorneys for marketing / commercialization support, as clients can get better advice on topics section from marketing and business professionals. However, there are occasions when you use the online service to evaluate the possibility of patent protection, but there is a danger that the client will access online services on these topics. Both areas are considered to be problematic in terms of both protection effectiveness (if any) and cost.
InventHelp is the most common online service that claims to provide services that inventors sell and commercialize marketing. This service also provides a means for inventors to evaluate investments and probably submit for patent protection. However, the client has to pay the cost (often more than $ 10,000) associated with using this type of service and a meaningful result (probably not subject to patent protection, who is not interested in the present invention regardless of investment) In fact, the Better Business Bureau (BBB) has received numerous complaints to InventHelp for many years. Many of these complaints and attempts to solve complaints are available online and reviewing some of these complaints is a danger that attorneys / patent agents use such services for clients It may help to better assist you and the pitfalls.
D. Conclusion
When considering whether a client is involved in protecting its own patents, one man sits on a table with a butter knife, and the surgeon of the cell phone talks to him, the way to perform surgery. The man asks: "You should not do this?" A wise question! Preparing a patent application yourself is very similar to doing surgery on your own. You intend to make a mistake. It is not a good idea, it should only be tried in the most extreme situations.
In addition, services such as LegalZoom and InventHelp may have been created with a noble intention to allow public essential documents without substantial inconvenience or high fee, but use such services Doing patent protection is risky. But the biggest pitfall is that the inventor has lost the possibility of patent protection using these services. This could be a much greater loss than the cost of attorneys supporting the process.
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