Posts Tagged ‘Patent Application’
March 20th, 2009 | 
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Even if you choose to use a patent agent or attorney to help you protect your invention, you will still have some work to do. After all, it’s your invention. And they need you to communicate the in’s and out’s of it as best you can.
It’s not just as simple as meeting with a patent attorney, giving them a short blurb on your invention, and expecting everything to magically fall into place. You will have to put in some effort here.
Obviously, they don’t know your invention like you do. And a short little discussion on it is probably not going to put them in the know. You will likely need to spend a significant amount of time conveying the intricacies of whatever you’ve invented to them. After all, the strength of your patent depends on how well you communicate your invention to your patent practitioner.
So here are some things you need to ponder before you start getting charged by the hour…
What problem does my invention solve?
When exactly was it invented?
How can I describe my invention as specifically as possible?
What are similar or related inventions?
What makes my invention better than these similar or related inventions?
What features have I improved upon?
Infringement and Provisional Damages
There is no action for infringement of your patent until it actually issues. However, through publication of your application, it may be possible to obtain provisional damages for the time between publication of the application and the issuance of the patent. Once your patent issues, infringement can give rise to treble damages and an award of 
attorney fees. During the phase from publication to issuance, only reasonable royalty damages can be awarded. Furthermore, a claim must survive and be substantially identical from publication to the issued patent.
Provisional damages require notice. Notice is achieved by both publication and provision of actual notice. Thus, you still have the burden of detecting infringement and of providing notice of your application to the alleged infringer.
Why You Should Consider Early Publication
An inventor can accelerate the publication process by filing a request for early publication. This can be done at any time and should result in publication within four months of the request. There are two logical times to file such a request: 1) when you first file your application–to gain the maximum published time available, and 2) when you believe an infringement may be taking place. In this latter case, where you have actual evidence of infringement, you can then file a petition to “make special” and hope that the Patent Office will accept the petition and begin examination of your patent application within six months. That way, you will possibly get the benefit of provisional damages, with the patent issuing shortly thereafter with higher damage awards available.
Benefits of Non-Publication
Non-publication keeps ‘em guessing. When a patent is filed, the inventor-applicant is entitled, and should, claim “Patent Pending” status. “Patent Pending” means that an application is on file with the Patent Office and is in the patent process. The inventor should mark his product “Patent Pending” and claim such status in any written material related to the invention. So long as the patent application is secret, competitors do not know what the inventor has disclosed or the breadth of the invention being claimed. Once a patent application publishes, competitors can at least determine the maximum scope that is disclosed in the application. However, while they will see the claims presented in the application, competitors still do not know the breadth of the invention claims that might eventually issue in the patent.
The Hazards of Requesting Non-Publication
Until the American Inventors Protection Act of 1999 (effective November 29, 2000), United States patents were kept in secrecy until they issued. Subsequent to the AIPA, inventors can elect to keep their application secret, but only if they will not file in a foreign country or file an application under a multilateral international agreement, such as the Patent Cooperation Treaty. If an inventor later files such a foreign or international application, it can lead to abandonment of the U.S. application unless the non-publication request is rescinded before 45 days after filing the foreign or international application. Thus, extreme caution is recommended before considering non-publication.