Is it necessary to obtain a signed non-disclosure agreement from an attorney prior to disclosing your invention ? The clear answer is no. A non-disclosure agreement is not required. Attorney confidentiality applies. Communication made by the potential client to the attorney in a confidential setting for the purpose of securing legal services (as well as…
Patent Application
PROVISIONAL PATENT APPLICATIONS
Introduction Provisional patent applications can be of great benefit in protecting innovation. They must be used, however, with a full understanding of the limited protection provided. Discussion A provisional application is a patent application. It is a type of a utility patent application. It may be thought of as a temporary application good for only…
WHAT IS A PATENT?
Introduction What is a patent? Simply stated, a patent is the exclusive right to prevent others from making, using or selling the invention or things made using the invention. Surprising? See the following discussion. Discussion Technically, a patent does NOT give you the right to make use or sell the products of your invention since…
Documenting Inventions
Introduction Since 2013, the United States has been a “First to File” jurisdiction. Prior to 2013, the US patent law awarded patents to the first inventor, rather than the first inventor to file. Previous to this change, it was accepted practice that researchers/inventors maintain documentation of their development efforts. Documenting inventions however remains important. Typically, documentation involved maintaining…
Patents, Trademarks & Copyrights
Introduction The following is a brief summary of each tool for protecting intellectual property (IP). The tools discussed are Patents, Trademarks & Copyrights. Patents Patents protect an idea (invention) that is embodied in a device or method. This is different from Copyright and Trademarks. The vast majority of patents are “utility patents”. There are also plant patents…
OVERCOMING AN OBVIOUSNESS REJECTION
Introduction Rejections under 35 U.S.C. 103 are the most common basis for an examiner refusing to allow issuance of a patent. Section 103 outlines an improvement or modification that would be obvious to a hypothetical person of ordinary skill in the art is not patentable. I have already written on this topic, i.e., “overcoming an…
DIY Provisional Applications
Introduction I talk to many start-up entrepreneurs regarding protecting their IP. Typically they do not have a lot of time or money to seek patent protection. However Congress created the provisional application for patent procedure for the benefit of just that group of entrepreneurs. Although I do not recommend filing your own provisional application without assistance of a…
PATENT APPLICATION FLOW CHART
Introduction The following is a simplified description on one possible chain of events that occur in the patenting process. This is a hypothetical patent application flow chart. See my article on “Behind the First to File Rules“. Also review my article regarding “Patent Application Elements“. Pre-Filing Outline Document invention in writing, signed and dated…
PATENT TERM
Introduction The term of a U.S. patent extends for 20 years from the date the non-provisional application was filed. Prior to 1995, the patent terms was 17 years after the patent issued. Since the patent term begins at the date of application filing, this means that the patent term is running during the term…
Prior Use Defense: Trade Secrets v. Patenting II
Indroduction This blog is a clarification of my prior article entitled Trade Secrets v. Patenting. In my prior article, I stated that a party using a technique or method in manufacturing as a trade secret would lose the right to continue practicing the trade secret if the secret technique or method became subject of a patent by…