Welcome to Patent Law Radio. We bring you the best in patent and invention news, legal advice and information. From patent prosecution to patent litigation, we cover the issues here.
Matt Plessner: Hello and thanks for tuning in to Patent Law Radio. My name is Matt Plessner and today we would just like to give you an overview of patents. What are they? How do you know when you should patent something and so on and so forth? And to help us out, we are speaking today with patent attorney Jason Young from the Traverse Legal office of Traverse City, Michigan. Jason, thanks a lot for joining us today.
Jason Young: My pleasure.
Matt Plessner: Now Jason, to start us off, can you please tell us what it means to patent something?
Jason Young: Sure. A patent is a right granted by the federal government to exclude others from making, using, selling or importing an inventor’s invention in the United States and its territories, and that’s one of the common misconceptions a lot of people have about patents. It’s not the right to do something. It’s not a monopoly necessarily, but it is a right to exclude others from those activities. Making, using, selling and/or importing, or offering for sale too. So, if somebody has a patent right, then they’re entitled to block other people from engaging those activities with respect to the invention that is covered by the patent in the U.S. A patent is national in scope. It has no effect outside the United States and its territories. There is no such thing as international patent yet. But as soon as a product that infringes a patent hits the shores of the U.S., then the patent holder can do something about it.
Matt Plessner: And Jason, what can be patented?
Matt Plessner: So say I have an invention, Jason, that I want to patent and obviously like we are saying that some things can be, some things can’t be, how do you know and how do you find out?
Jason Young: First we apply the statutory subject matter test that I just mentioned. Is it an article of manufacturing, is it a machine, is it a composition of matter or some sort of process that is recognizable as something that can be patented, and a lot of software, the functionality of it people try to patent. People can try to patent certain methods that are carried out on the internet or on computers. So that is the first test that we apply. A lot of people will come in initially with new things that they have created which may not be patentable subject matter. For example, a decorative patterns would be the subject of copyright rather than a patent. Or they will come in with their new slogan or logo for a product that is a subject of trademark law, not patent law. So we make, sort of a crude determination right up front as to whether they are even talking to the right type of attorney. After we get over the statutory subject matter hurdle, assuming that what your invention is something that the patent law recognizes as patentable. Then the next three hurdles that you have to overcome with the Patent Office in order to get a patent are Enablement and Novelty and Non-Obviousness. The Enablement, and also lumped in with that is the written description requirement, says that when you apply for a patent, you have to provide at least one clear teaching example of how to make and use your invention. And you can give more than that, but you have to have at least one clear example, a written description, of how to make and use it. That is the quid pro quo for being granted the patent right. The point of the patent system isn’t necessarily to make inventors rich, although that is certainly an incentive for them to profit from their inventions, but the point of the patent system originally was to generate as a matter of public policy a library or database of technical knowledge that would spur other inventors onto to build a so-called better mouse trap. This is an old system. It goes back to the writing of the Constitution. The authority to grant patents and copyrights was written right into the Constitution in Article 1, Section 8, right after the clause authorizing Congress to establish post offices and a road system in the country. So it is very old and that was the policy behind it. So, if you provide that clear written description of how to make and use your invention, then the Patent Office will move onto the next step, which to evaluate whether its … if it is new and different enough from what is already out there. Those are the Novelty and Non-Obviousness standards. The Novelty standard says that your invention must be new. You can’t re-patent something that is already known. Whether it is the subject of an earlier patent or whether it is something that has just been known to the public for a long time. A year, ten years, a hundred years, a thousand years, it doesn’t matter. You can’t re-patent something that is already in the public domain. If you … well, the Novelty hurdle is relatively easy to overcome because the Patent Office has to find a pretty exact match in order to bar you or deny you from getting a patent. If you overcome that hurdle, and we usually can, then we move onto the obviousness standard. And the obviousness, or non-obviousness standard, is the one we tend to argue with the Patent Office. And very roughly that’s standard is even if the Patent Office cannot find the exact same invention, if they can find a lot of similar earlier products … earlier inventions, earlier patents that are out there that are close to what you got, and if those earlier inventions suggest or imply fairly clearly the solution that you have come up with, they suggest your invention … then they will begin arguing with you that your invention is obvious and they don’t want to grant patents on that either because they want to give people enough leeway to practice known inventions without letting everybody lock up or exclude new developments that are trivial.
Matt Plessner: Now how long does it take to get an issued patent, Jason?
Jason Young: It varies. On average, I tell clients that they are looking at one to two years. A year and a half is a very rough average and that may even be a little optimistic these days. Once you apply for a patent, that’s when you become patent pending, the moment you file a patent application. And then basically you have to wait a long time to hear back from the Patent Office. It works its way very slowly to a patent examiner who will run a search of the Patent Office records and maybe foreign patent offices and private collections of technical information that they might keep. They might search the internet and then they will get back with you with an opinion. And again, you are probably looking at a year, year and a half, to hear back from them the first time. The Patent Office has a goal that they set for providing a first opinion on patentability within fourteen months of the filing date and they often don’t meet that. After you get back this first opinion on patentability, which is often negative, in fact I think I have seen statistics that maybe around 85% of the initial response by the Patent Office is negative in some respect. Then we begin a little bit of an argumentation process with them, in writing mostly, where we try to convince them that they are wrong and that they have applied the standards improperly or we may amend what we are asking for to make it clear to the examiner or to change the scope of the patent right that we are requesting from the Patent Office. There is a little bit of back and forth like that usually with the examiner, maybe two, maybe three rounds as a rough rule of thumb, and then hopefully the Patent Office will issue a final and hopefully positive decision to grant a patent. So again, a year and a half, two years, it can go longer. I have seen three or four years.
Matt Plessner: Well Jason, thank you very much for joining us today.
Jason Young: You’re welcome. Thanks Matt.
Matt Plessner: My name is Matt Plessner and join us next time on Patent Law Radio.
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