Filing an International PCT Patent Application

WIPO_PCT_InternationalPatentAppGenerally, you cannot obtain a single patent that is effective in every country in the world. Patent protection must generally be secured in each foreign country or jurisdiction through a local patent in that country or jurisdiction. However, regional patents exist that span across multiple countries. One example of a regional patent is a European patent, where European member countries of the European Patent Office (EPO) recognize EPO patents.

Apart form regional patents, there exists an international patent application called a PCT patent application that provides a process for reserving your right to file patent applications in  foreign countries and participating regions, such as the EPO.

Paris Convention v. PCT
For member countries of the Paris Convention, generally foreign patent applications must be filed within 12 months of the earliest national application filed in a member country. Therefore if the applicant first filed a patent application in the United States, the applicant would have 12 months from the U.S. filing to file foreign applications in Paris Convention member countries claiming priority and receiving the benefit of the filing date of the U.S. patent application.

The PCT (Patent Cooperation Treaty) application process generally gives the applicant an additional 18 months to consider whether and in which countries to pursue patent protection. If the applicant first filed a patent application in the United States, then filed a PCT application within 12 months of the U.S. filing, the applicant would generally have an additional 18 months to nationalize the PCT application in the foreign countries in which the applicant desired patent protection.

However some PCT member countries do not provide the full 18 months for nationalization, but instead require nationalization at a much sooner time. It is important to consult early in the process with an attorney regarding the deadlines that would be applicable to your case.

PCT Member Countries
Over 140 countries are PCT member countries. Therefore by filing a PCT application, you can reserve your option to pursue patents in over 140 countries. Not all countries are PCT member countries. The PCT application process has two steps, the international stage and the national stage. Residents or nationals of any PCT member country are eligible to file a PCT application.

International Stage
A PCT patent application must be filed within 12 months of the first filing of a national patent application (such as a U.S. provisional or non-provisional patent application). An example application process flow is provided in figure 1 below.


The example of in figure 1 shows that at point A a U.S. Patent Application was filed. Then 12 months later at point B a PCT application was filed claiming priority to the U.S. Patent Application. It is also possible to file the PCT application first before any national application.

The PCT application can be filed through a receiving office in PCT member countries, such as the U.S. Patent and Trademark Office or through the international bureau at WIPO.

After the PCT application is filed, an International Searching Authority (ISA) will perform a patentability search and issue an international search report. The ISA will also issue a written opinion on patentability. The applicant has the option to withdraw the application in light of the search report or written opinion, if this is not done the application and the international search report will be published. The PCT application will generally be published 18 months after the earliest priority filing date (such as the first national application filing date).

The PCT applicant can request a second or supplementary international search which may be carried out by one or more of the ISAs  (other than the one that carried out the main international search) resulting in a supplementary international search report. The PCT applicant has the opportunity to amend the claims in the patent application in response to the search report.

Optionally, the PCT applicant can request a Chapter II Examination international preliminary examination resulting in an international preliminary report on patentability.

National Stage
The PCT application must be “nationalized”  (entered into the national phase) into the particular foreign countries or jurisdictions that you would like to have patent protection in. Once the application is nationalized in a particular country, the application will be examined under the local laws of that country to determine whether a patent should be granted.

Therefore if you wanted to have foreign patent protection in China, Australia, and in Europe, you would need to nationalize the PCT application in each of those jurisdictions by the nationalization deadline (see below) in order to seek patent protection there.

The deadline for nationalizing the PCT application depends on the country. Most countries or jurisdictions require the application to be nationalized within 30 months of the earliest filing date (the earliest claimed priority application filing date) other countries or jurisdictions require nationalization within 31 months. However, as explained above, some PCT member countries do not provide the full 18 months for nationalization, but instead require nationalization at a much sooner time. It is important to consult early in the process with an attorney regarding the deadlines that would be applicable to your case.

The earliest claimed priority date in the example of Figure 1 is the date that the US application was filed, not the date that the PCT application was filed.

At point C in figure 1, nationalization occurs regarding Countries 1 and 2 at the 30 month deadline. At point D in figure 1, nationalization occurs regarding Countries 3 and 4 at the 31 month deadline. Nationalization might occur into a regional patent organization, such as the European Patent Office, rather than a country.

Individual countries or regional patent organizations many provide a grace period or revival period allowing the nationalization even after the deadline. Therefore if you have missed the nationalization deadline, you should inquire with an attorney whether there are still options for nationalizing your application in the countries you choose.

Nationalization usually involves the payment of nationalization fee, filing of certain documents, and in some cases, filing of a translation of the application. Then the nationalized application will be considered under the local laws of the jurisdiction to determine whether a patent should be granted. Local attorney representation will likely be needed in the nationalized jurisdictions to prosecute the application under their local laws. Generally your U.S. lawyer can work with foreign attorneys during the local prosecution of the application in the national stage.

Pursuing patent protection by nationalizing a PCT application in every PCT country is generally not economically feasible. The need to hire local attorneys and prosecute the applications in each of 140 countries would be an very expensive endeavor.

Instead, clients often, at or before the nationalization deadline, choose to nationalize the PCT application in countries where they have (1) actual or anticipate sales or (2) actual or anticipated licensing or business opportunities sufficient to justify the foreign patenting expense.

The PCT international patent application filing fee is around $4000. The nationalization fees can range from $2000-$7000 per country to file.  After that there are prosecution costs in each country until the application hopefully issues within a few years as a patent. There are also yearly patent application fees and patent annuity fees to be paid in each country.

Seeking foreign patent protection involves considerable costs. However, foreign patenting can be valuable when undertaken with a targeted approach that is aligned with the appropriate business case.

Viewing Patent Application Status and History at USPTO Online with PAIR

USPTO_Public_PAIRThe USPTO provides online access to the file history and the current status of patents and published applications through a system called PAIR (Patent Application Information Retrieval). The file history, sometimes called the file wrapper, is a record of all the documents filed by the applicant and the USPTO regarding a patent or patent application. Review of the file history can be helpful in many circumstances to understand more about what the applicant said to the USPTO, during the prosecution of the application. You can also determine the status of a published application or patent using public PAIR.

Here’s a navigation table to make it easier to skip to the sections that are of interest.

  1. Access and Logging in
  2. Bibliographic Data (Application/Patent Status)
  3. Transaction History
  4. Image File Wrapper (Downloadable Files)
  5. Continuity Data
  6. Maintenance Fees
  7. Published Documents
  8. Address & Attorney/Agent
  9. Display References
  10. Conclusion

1. Access and Logging In
Currently you can access public PAIR by going to Then you will be asked to enter text/characters at the CAPTHCHA stage. Next, you will see a page with a portion showing a tab “Select New Case”. There you have five options for the type of number you will enter in the search box: (1) the patent application number, (2) a control number, (3) the patent number, (4) a PCT number, (5) a publication number. Select the correct option for the number you will enter. Then enter the number in the search box and press the search button.

Patent Number. As an example, I selected the patent number option and entered 8,000,000 in the search box to retrieve the file history of U.S. Patent No. 8,000,000.

Patent Application Number. Alternatively, I could have selected application number and entered 11874690, which is the application number that corresponds to U.S. Patent No. 8,000,000. If you are looking up your own published patent application, you can select application number radio button and enter your application number. If your patent application has not yet published as an application, you will not be able to access it through public PAIR.


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2. Bibliographic Data (Status)
Next you are presented with the Bibliographic data under the application tab. Bibliographic data contains the application number, the filing date, the application type, the Examiner, the group art unit, the attorney docket number, the class and subclass of the application, the inventor’s name, the entity size, the status of the case, the date of the status update, the location, the application publication date, the application publication number, the patent number, the patent issue date, whether the application was/is subject to the America Invents Act, and at the bottom, the title of the invention.


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3. Transaction History
The transaction history tab shows all the transactions in the case, including items filed by the applicant, and process flows and happenings at the USPTO regarding the application. The transaction history does not provide any links to documents, those are found in the Image File Wrapper tab.

The Transaction history can show you internal happenings at the USPTO related to the case that do not show up as filed documents in the Image File Wrapper tab. For example, as shown below the applicant’s response, which is filed on 2-14-2011, was forward to the Examiner on 2-16-2011.  However, this forwarding notation is not found in Image File Wrapper tab.

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4. Image File Wrapper
The USPTO started providing electronic file histories at the USPTO in 2003. If the patent application was filed before 2003, the file history might not be available online. In that case, you will need to goto the USPTO or hire a service, such as ReedTech, to goto the USPTO for you and copy the file history.

The image file wrapper tab shows all the documents filed by the applicant or issued by the USPTO in the case. The file wrapper tab also allows you to download the documents filed in the case in PDF format, by selecting the corresponding check-box and clicking the “PDF” icon at the top right.


Non-patent literature (NPL) is viable in the history but not downloadable via PAIR over copyright concerns, e.g. that easy access to these documents will facilitate copyright violations by the public and negatively impact the copyright holders ability to charge for these works. NPL are prior art documents filed by the applicant, such as journal articles, excerpts from books, or other publications. On the image file wrapper tab you can see (not shown above) the NPL in the case of US Patent 8,000,000 was filed on 1-08-2009 and the check box for selecting and downloading at the right is grayed-out.

Looking at the image file wrapper for US Patent 8,000,000, we see that the USPTO issued a non-final rejection on 11-15-2010, which was the third rejection in the case (see the non-final rejection on 3-06-3009 and the final rejection on 7-17-2009). On 2-14-2011 the applicant filed a response presenting remarks having arguments for patentability, amendments to the specification, and amendments to the claims. The response on 2-14-2011 was successful in overcoming the Examiner’s refusal of 11-15-2010 because on 4-08-2011 the USPTO issued a Notice of Allowance (NOA), the applicant paid the patent issue fee on 6-27-2011 and the patent was issued on 7-27-2011.

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5. Continuity Data
The Continuity Data Tab provides information about related patents or patent applications.


The application that resulted in US Patent 8,000,000, claimed priority to an earlier provisional patent application no. 60/852,875. Also downstream from the US Patent 8,000,000, are three patent applications (11/926,044, 13/168,653, 13/707,984) that claim priority to the application (11/874,690) that resulted in US Patent 8,000,000.

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6. Maintenance Fees
For utility patents, patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. If a patent has issued you can click on the Fees tab, where you are taken to the USPTO maintenance fee page.


You must enter the patent number and the corresponding application number in order to retrieve maintenance fee information. Here the patent number is 8000000 and the corresponding application number is 11874690. By clicking the “view payment windows” a window similar to the following will be displayed.


As the USPTO currently provides a six month grace period after the 3 1/2, 7 1/2, and 11 1/2 year deadlines, the USPTO references 4th, 9th, and 12th years rather than 3 & 1/2, 7 & 1/2, and 11 & 1/2 years. The widow when the payment can be made opens six months before the 3 1/2, 7 1/2, and 11 1/2 year date. The USPTO charges a surcharge for payments made in the six month grace period. Therefore the surcharge date is the day after the 3 1/2, 7 1/2, and 11 1/2 year date. The close date is 6 months after the 3 1/2, 7 1/2, and 11 1/2 year date.

By clicking on the Get bibliographic Data button, you will receive information about whether any maintenance fees have already been paid. In the case of the Patent 8,000,000, no fees have yet been paid.


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7. Published Documents
The published documents tab provides a list of publications related to application 11/874,690. In this case, the application was published as an application as US Pat Pub. 2008/0097548 A1 on April 24, 2008 and was published as a patent as US Pat 8,000,000 on May 10, 2011.

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8. Address & Attorney/Agent
The Address & Attorney Agent tab provides the current correspondence address for the patent or application as well as information about the patent attorney or agent representing the patent applicant / owner.
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9. Display References
The display reference tab provides documents containing prior art references (such as patents, patent applications, publications, etc). This is a subset of the documents downloadable from the image file wrapper tab. The NPL is not downloadable as you can see that the box is grayed-out next to the NPL in the screen view below.


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10. Conclusion
Whether you want to check the status of your patent application or you want to learn more about an existing patent or published patent application, USPTO’s public PAIR system provides detailed information about such applications and patents.

How Can A Delay in Getting A Patent Help Me?

International Airport Board Close-Up with Delayed FlightsMany inventors are shocked to find out that once their patent application is filed, it may take one or two years before the US Patent Office acts on the application, and perhaps another one or two years after that for a patent to be granted (unless an accelerated request is made). This is due to the backlog of work at the US Patent Office.

Does a long delay between the filing date of the application and the patent issue date hurt the inventor’s plans to exploit his invention? What if someone sees his product, copies it and sells it before the inventor has his patent?

Short Commercial Life
For inventions that have a short commercial duration, a long period of time between patent application filing date and patent issue date can be harmful. For example, if an invention was only useful for a particular model cell phone and not useful after the cell phone is replaced by a new model, the long delay could be detrimental to commercial exploitation of the invention, in that a copier of the invention could not be stopped before the commercial life of the product has already dried up.

Longer Commercial Life
However, for most inventions, the commercial viability of the invention lasts well beyond 3 or 4 years. In this case, the delay at the Patent Office to issue a patent is not necessarily detrimental and can work in the inventor’s favor. For example, once an application is on file, the inventor can exploit his invention by advertising, offering the invention for sale over the Internet and undertaking other commercial activities to create a market for the product. This is expensive. On the other hand, the costs of obtaining the patent are spread out and delayed.

Copier Makes a Market
During this “patent pending” period a copier is free to copy the invention since the inventor does not have an issued patent (except in certain usual circumstances). However, the copier will also spend money on creating a market for the product. The copier may be a company that is in a better position to advertise and create consumer demand for the product than the inventor. The copier could market the product for a few years before the inventor’s patent issues.

Patent Owner Takes Over Market
However, if and when a patent issues a few years later, the inventor will be in a favorable negotiating position with respect to the copier. The inventor can sue to stop further sales by the copier and take over the market share for the product that the copier created. Alternatively, the inventor can offer the copier a patent license at a higher rate since the copier has already invested money in developing and marketing the product and is more likely to accept such a license. Still further, particularly in the case where the inventor is not selling a product but wishes to sell the patent, the inventor can offer to sell the patent to the copier at a higher price since the inventor can otherwise sue the copier to stop further sales. The copier would also have an incentive to purchase the patent since the copier can now enforce the patent against other copiers.

Additional Time Added on End of Term
It should also be noted that the term of a US Patent is 20 years from the application filing date. If the duration to obtain the patent was delayed by the Patent Office more than three years from the filing date, the Patent Office grants additional time onto the term of the patent to make up for the delay. In effect, time is added onto the back end of the patent term which is typically more valuable than time at the front end of the patent term.

Beneficial Delay
For some inventors and companies, a delay in obtaining a patent due to the backlog at the Patent Office may actually be beneficial.

How long does it take to get a patent?

There are a number of factors that effect the time until you receiving a patent as explained below.

Patentability Searching:
First, if you choose to have a patentability search performed by our office, that generally takes 1 to 3 weeks to complete, depending on the volume of search results and the workload at the time.

Patent Application Drafting:
If we receive all the information about your invention before we start drafting your invention, on average it will take between two to four weeks to draft the application for your review. If shorter time frames are needed, we will strive to achieve a timeline that works with your schedule. In a past expedited circumstance, we were able to file an application within 2-4 days after receiving all the required information about the invention. The time frame within which we could draft a patent application depends on our present workload, the complexity of the invention, and the amount and type of information provided by the client before drafting begins, as well as the number of changes provided by the client after drafting begins. After the patent application is filed you will have “patent pending” status in the United States.

After Patent Application Filing
After filing, the length of time to patent grant depends on whether you begin with a provisional or a non-provisional patent application in the United States. If you begin with a non-provisional patent application, the U.S. Patent and Trademark Office (USPTO) will place your application in a queue to be examined by a Patent Examiner when the USPTO receives your complete non-provisional patent application.

The present (2019) average wait time until the USPTO provides us with the results of the Patent Examiner’s first substantive review and examination (average pendency to first office action) of the patent application is about 16 months. The average time it takes to obtain a patent from the patent office at this time is about 24.1 months or about 2 years. [See the current wait time statistics at the USPTO website [here] (best viewed with Internet Explorer or Chome)].

The actual amount of time it will take for your patent application to be examined, and if found allowable, to issue into a patent will vary. Some technical areas have a longer or shorter wait time because the USPTO groups patent applications based on the invention’s technology and assign patents to technology groups (known as art units) of examiners at the USPTO for examination. If one art unit has more patent applications in the queue than another art unit, then patent applications assigned to the art unit with relatively more patent application will wait longer for examination and ultimate issuance.

If you decide to file a provisional patent application, the patent office will not put your provisional patent application in a queue to be examined. Instead, a non-provisional patent application must be filed within one year of the filing date of the provisional application, in order to claim the benefit of the provisional application filing date. In the case that you file a provisional and then file a provisional on the one year anniversary date of the filing of the provisional, one additional year will be added to the times listed above. This is true because you have waited that 1 year to have the non-provisional application placed in a queue to be examined.

Prioritized Examination
The USPTO offers a prioritized examination (also known as Track One) for utility and plant patent applications for a limited number of patent application per year. To be considered for the prioritized examination, the applicant must pay additional fee to USPTO. Under the prioritized examination procedure the USPTO assigns a priority status to your application. The USPTO aims to get to a final disposition (allowance or final rejection) of your patent application within 12 months of the prioritized status being granted.

Patent Pending
While your patent application is pending (after the patent application is filed but before the patent is granted) you will have patent pending status. You are not required to wait until you obtain a patent to start exploiting (making, marking, selling, licensing, etc.) your invention. You can begin doing so after the patent application is filed, as long as the patent application fully describes and covers all the elements of your invention that you intend to disclose and use publicly.

Eric Waltmire Presenting on IP for Dupage’s REV3 Innovation Center

Rev3On March 11, 2014 at 6:30pm, REV3 Innovation Center of Dupage is hosting me for a presentation on Strategies for Protecting Intellectual Property: Innovation and Branding. Intellectual property plays a role in adding value to most businesses, whether through invention, branding, or the use of other creative works.

My presentation will help business owners, entrepreneurs, and inventors understand how patents and trademarks can be used to protect innovation and business branding. It will provide strategies for protecting intellectual property rights under various scenarios and funding circumstances. Sign up here to attend.

Particularly the presentation will cover the following.

Patents and Invention Protection:

  • What is patentable
  • Patent Searching
  • The U.S. Patent Application Process
  • When to maintain secrecy and when to publicize
  • Seeking Foreign Patent Protection
  • When not to seek a patent
  • When and how to rely on trade secret protection

Trademarks and Brand Protection:

  • Value of trademarks
  • Types of marks
  • Strategies for choosing legally strong marks
  • Proper trademark use
  • Strategies for relying on branding in the absence of patent protection

In addition, the presentation will discuss steps that are needed to obtain and maintain ownership over the intellectual property created by your company, its employees, and its contractors.

REV 3 Innovation Center
REV3 Innovation Center is an incubator and future co-working space in DuPage County. REV3 is focused on helping people and companies manufacture products, software, and technology to drive the third industrial revolution. One aim of REV3 is to provide facilities to allow companies to prototype, build, and assemble small and moderate scale product volumes.

If you are interested in getting involved with REV3, please contact me.

The presentation will be held at the Illinois Institute of Technology (IIT) – Rice Campus at 201 E. Loop Rd., Wheaton, IL 60189.

Please sign up to attend here:

How Do I Reduce Patent Costs?

PatentCostsReduceBelow are some steps that you can take to help reduce the cost for us to prepare a patent application on your behalf. These steps are not required as we can draft an application based on your requirements and information. However, by following the guidelines below you can assist in reducing patent preparation costs. See our separate article for general information about how much a patent costs.

Provide a Detailed Description of the Idea at the Start
It is important that you provide the most detailed written description of your idea. The written description should include drawings. The drawings can be hand-sketched. The written description should make reference to individual parts of the invention shown in the drawings. The drawings should have parts labeled by number. The written description should make reference to the parts by name and number.

Generally, short summaries or brochures do not provide sufficient details about the invention and how it works. If we have to request many details about the invention from the inventor, this adds time to the process and drives up the cost of preparing an application. Another scenario where we generally need to put forth a lot of effort to obtain details about the invention is when the inventor only orally describes the invention and we need to draft the application from the oral description.  When the inventors presents a clear and detailed description of the details of invention, its various functions, and the benefits of the invention as compared other inventions in the field, we are able to most efficiently prepare an patent application on the invention.

Start with a Complete Invention
When an inventor keeps inventing during the time when we are drafting the application, the cost of preparing the application can rise substantially. Description of the new features must be added. Sometimes various parts of the patent application need to be rearranged to account for the new developments. Often times drawings will have to be changed or new drawings created to include the new details not provided in the beginning. Adding details after the application drafting is underway generally takes more time, and generates more costs, than if the details had been provided at the beginning.

Provide a First Draft
We can often provide an example patent application that is in the field of the inventor’s invention. A template can also be provided for the inventor to start from to assist in developing a detailed description of the invention. If the inventor drafts a first draft based on a template provided, cost can be reduced. We can then take this first draft as a base and draft a patent application that meets our standards having all the appropriate language and detail.

The cost to prepare a patent application depends on many factors, however the above guidelines can help reduce the cost for us to prepare a patent application for you.

What is an Invention?

For our purposes, we will focus on patentable inventions. Abstract ideas cannot be patented but many ideas are implemented in a manner (an invention) that falls within what is patent eligible subject matter. There are four general requirements for an invention to be patentable (as a utility patent): (1) it must comprise patent eligible subject matter, (2) it must be new, (3) it must be useful, and (4) it must be non-obvious. Each requirement for a utility patent will be address below. Then the requirements for design patents and plant patents will be discussed.

Patent-Eligible Subject Matter
The subject matter of the invention must fall within one of the patentable subject matter areas set forth by Congress. Patentable inventions include the following: a process/method, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The courts have stated that Congress had intended patentable subject matter to be very broad and may include anything under the sun that is made by man.

The invention must be new (e.g. novel). Patents are only granted on new inventions. Patents are designed to encourage inventing and the disclosure of inventions. Therefore if your invention has already been disclosed to the public in certain predefined ways, then you may be prohibited from obtaining a patent over your invention. A patent novelty search is designed to provide you with some information on whether your idea is new and therefore patentable.

However, an invention may be considered new even if the invention includes parts that are old and known. Many (if not most) inventions are an improvement on an old invention. Even the combination of old parts in a new way can be patentable. Similarly a new method of using a known device my be patentable.

A patentable invention must have a use or utility. This is the most easy element to satisfy. Unless the invention is only useful as landfill, the invention most likely is useful for something.

The invention must be non-obvious in view of the prior art (prior inventions and publications, among other things). The non-obviousness requirement is intended to ensure that the invention is sufficiently different or new to warrant patent protection. The non-obviousness requirement is not necessarily synonymous with the common understanding of the word “obvious.” The non-obviousness element is very circumstance dependent. Very small changes may be considered non-obvious. You should be sure to check with an patent attorney before concluding that your invention is obvious.

If your invention meets each of the above requirements, then the invention should be eligible for patenting, assuming all of the procedural requirements are met in filing and prosecuting a patent application.

Design Patents
The above requirements are for utility patents. The ornamental design of an article of manufacture may receive a design patent if it is new and original. Therefore like invention of a utility patent, the ornamental design can be protected if it is new and non-obvious. As design patent protection is narrow, even small changes in the ornamental design of an article may received design patent protection.

Plant Patents
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What is a Patent?

PatentA United States patent is a property right granted from the United States government giving the inventor the right to exclude(stop) others from making, using, offering for sale or selling the patented invention in the United States for a limited period of time (usually 20 years from the filing date).

A patent is a type of intellectual property. Other types of intellectual property include: copyrights that protect the expression of an idea, trademarks that protect product and service source identifiers (brands), trade secrets that protect information and other items that have business value and are not generally known.

A patent provides a time limited monopoly over the invention in exchange for disclosing to the public the details and manner of composition of the invention. The monopoly allows you to prevent others from benefiting from your inventive work without your permission. Therefore you may be able to charge more for your product or service that is protected by a patent, than would be possible if your product was not protected and competitors copied your product and competed with you.

This exchange of a monopoly for public disclosure, allows the science area of your invention to be advanced. During and after the time when your patent is in-force others can read about the details of your invention as described in your patent, which might spark other non-infringing ideas which will advance the art/science related to your invention. Therefore you benefit from the monopoly provided by the patent and the public benefits by understanding your invention which can advance related engineering and sciences.

Maintenance fees must be paid by the patent owner at certain intervals in order to keep the patent from expiring before the patent term ends.

A U.S. patent does not provide protection outside of the country. However a U.S. patent can be used to prevent the importation of infringing products in to the United States from abroad. Foreign patents are needed to receive protection in chosen foreign countries.

Patent Protecting Your Invention When Launching a Kickstarter Campaign

CF3The problem is that you need to publicize your invention on Kickstarter or Indiegogo or another crowdfunding platform to have money to make and launch your invention, but patent law encourages you to file a patent application before you make your invention public. If you are seeking money to develop and launch your invention, you might not have any money or you might not want to spend any money on a patent attorney before you know whether your product will be commercially successful. On the other hand, a number of Kickstarter campaigns claim the product is patent pending. Here’s how to best protect your ability to obtain a patent on your invention when launching a Kickstarter, or Indiegogo, or other similar crowdfunding campaign.

Crowdfunding Patent Cheat Sheet
For those that don’t want to read this whole article here’s the short answer:

Step 1: Patent Searching. Patents are only granted on new inventions. Just because you don’t see your proposed product on the market, doesn’t mean its new. Many products are described in old patent documents at the patent office, but are not on the market. Hire a patent attorney to do a patent search. If you can’t afford that, do your own patent search to see if your invention is already described in a prior patent or patent application. If doing it yourself, you can word search at the U.S. Patent Office website or you can search by patent class or you can search at Google Patents.

Step 2: Draft and File Provisional Patent Application. If the patent search is clear, hire a patent attorney to draft a patent application on your invention before you launch it on Kickstarter. If you can’t afford a patent attorney, draft and file your own provisional patent application after reading a book or two on patent drafting, like Patent It Yourself.

Step 3: Launch your Campaign. Hopefully it is successful. Carry out the project plan. Begin selling your product and making money.

Step 4: File a Non-Provisional Patent Application. If your product is successful and/or you want to continue seeking a patent, you must file a non-provisional patent application within one year of the filing of the provisional patent application. Use some of the money you made selling the product to hire a patent attorney to do this. DIY on this step is very difficult, harder than any of the of the prior steps. It’s unlikely (not impossible, but unlikely) that you’ll be able to write strong and broad patent claims that will provide you with any value in a resulting patent.

Late to the Party: If you already launched your campaign without filing a patent application, you likely can still file a patent application within one year of your first going public, selling, or offering for sale of the invention. But, you should not rely on the one year grace period if you can avoid it.

Here’s the detailed explanation.

Patent Searching: Is your Invention New?
The first step in the patent process is almost always performing a patent novelty search to see if your invention is new. The patent office only grants patents on inventions that are new.

But you are planning to launch a Kickstater campaign. Kickstarter is for creative projects. So, you don’t have to worry about whether your invention is new or not, right? Not so. You may have done market research that shows there is nothing like your invention on the market. But there are a lot of uncommercialized products described in patent documents that you won’t find on the market.

You can hire a patent attorney to perform a search or you can do it yourself. Patent searching takes time and study to get good at. However, as between doing no search and searching yourself, searching yourself is worth a try.

You can word search at the U.S. Patent Office website. However, presently only patents going back to 1976 are word-searchable at the patent office website. Patents older than 1976 are not word searchable at the patent office website. But all patents are searchable by patent class. You can also search through other search tools, such as Google Patents.

If the search results look good, you can move to the next step: preparing and filing a patent application.

Patent Application Stage
There are two questions at this stage: (1) do I hire a patent attorney or do I do it myself and (2) do I file a provisional or a non-provisional patent application?

Provisional v. Non-Provisional Patent Application
If you must draft and file a patent application yourself, then you should file the application as a provisional patent application (see this article on provisional vs. nonprovisional patent applications). This is true because the USPTO is less likely to object to your submission (because there are lesser requirements for provisional applications) and because you will want to have a patent attorney draft and file a non-provisional patent application on your invention within one year. If you can hire a patent attorney, then the decision whether to go provisional or nonprovisional may depend on some of these factors: (1) whether you anticipate further developing your product, (2) whether your need a patent sooner/faster (non-provisional) or are ok with delaying one year (provisional), and (3) whether you need your upfront cost to be as low as possible (provisional). Here’s how to decide between a provisional and a nonprovisional patent application.

Hire A Patent Attorney v. DIY Patent Drafting
It is recommended to hire a patent attorney. It is hard for someone to write a good patent application on their first try (see the problems that can arise in writing your own patent application).

However, you are seeking funding through Kickstarter, so there’s a chance that you don’t have any money to hire a patent attorney. Or maybe you could afford it, but you take a business risk and allocate such money to other portions of the project. If for whatever reason you decide to skip hiring a patent attorney, you should take a shot at drafting and filing your own provisional patent application, because it has a chance of being better than doing nothing.

There are two approaches to drafting your own patent application. The first is to take whatever technical description you already have written along with any drawings and file them as a provisional patent application along with the provisional application cover sheet. The patent office will not review the content of your provisional patent application and therefore will accept just about anything as a provisional patent application (e.g. scientific papers, marketing sheets, back of the napkin sketches). This first option to just file whatever you have already written is the easiest and fastest option but the worst in terms of your chances of the provisional application “holding up” and being worth anything later.

The better second option is spend some time studying the requirements and form of a proper patent application. You might seek out patent self help books for this purpose, such as Patent It Yourself. These books are not a substitute for hiring a patent attorney, but if you must do it yourself, these resources are a good start so you will have a better chance of writing an application that might be worth something. Again there’s no guarantee that the application you write will hold up, but its possibly better than doing nothing.

Launch Campaign
Now you can launch your campaign. Hopefully it is successful. Carry out the project plan. Begin selling your product and making money.

Non-Provisional Patent Application
After the provisional patent application is filed and your project is launched, if the project is successful and you want to continue to seek patent protection, you will need to have a non-provisional patent application written and filed before the one year anniversary of the filing date of the provisional application. For this you certainly want to hire a patent attorney. Hopefully sales of your product have generated revenue, some of which you can use to hire one.

On the other hand if the project doesn’t take off and you don’t want to continue in the patent process, then you can do nothing and let the provisional patent application expire.

I Launched Without Filing a Patent Application, What can I do?
If you already launched your Kickstarter campaign without first filing a patent application, you may still be able to file. While patent law after the America Invents Act still has a one year grace period for certain circumstances, you should not rely on the grace period if you can avoid it. However, if you’ve already gone public with your invention, you may still file a patent application within one year of first going public, selling, or offering the invention/product for sale.

The above guide provides the you with options, depending on the available resources, to patent protecting your invention when launching a crowdfunding campaign for products (and certain types of services).

Mercedes Successful Invalidating Driver Sleepiness Detection Patent

USPat6313749_Fig1The case of Ibormeith IP LLC v. Mercedes-Benz USA, LLC, Dkt. No. 2013-1007 (Fed. Cir. Oct. 22, 2013) is another case where means-plus-function claims were found invalid for lack of an adequate algorithm/structure disclosed in the description of the patent.

Ibormeith sued Mercedes alleging that Mercedes vehicles having an Attention Assist feature infringed U.S. Patent No. 6,313,749. The ‘749 patent is titled, “Sleepiness Detection for Vehicle Driver or Machine Operator.” The ‘749 patent is directed to monitoring conditions affecting or behavior reflecting a vehicle driver’s sleepiness. Then issuing a warning to the driver before driving is unduly impaired.

Sleepiness Warning
The patent discloses monitoring that takes into account sleepiness factors including, as summarized by the court, “natural body-clock (circadian rhythm), the magnitude and number of corrective steering action the driver is taking, the cabin temperature, the monotony of the road, and how long the driver has been driving.” The factors are “individually weighed, according to contributory importance, and combined in a computational decision algorithm or model, to provide a warning indication of sleepiness.”

Means Claims Language
Claim 1 provided this means clause: “…computational means for weighting the operational model according to time of day in relation to the driver or operator circadian rhythm pattern(s) and for deriving, from the weighted model, driver or operator sleepiness condition and producing an output determined thereby…” Claim 9 provided this means clause: “…computational means for computing steering transitions and weighing that computation according to time of day, to provide a warning indication of driver sleepiness…”

Lack of Structure In Specification
The court recited the rule for means-plus-function clauses: “For a claim to be definite, a recited algorithm, or other type of structure for a section 112(f) claim limitation, need not be so particularized as to eliminate the need for any implementation choices by a skilled artisan; but it must be sufficiently defined to render the bounds of the claim—declared by section 112(f) to cover the particular structure and its equivalents—understandable by the implementer.”

However the Federal Circuit found that these means clauses if the ‘749 were not tied to a structure or defined with sufficient particularity in the specification. As a result the requirements of 35 USC 112, sixth paragraph were not complied with and the claims were held invalid.

The specification provided a formula in table 10 that provided “sleep propensity algorithm – definition “S mod = S circ + S zerox + S rms + S light + S temp + S sleep + S road + Strip.” However, Ibormeith’s expert provided that the algorithm was not based on a simple adding of already weighted inputs. This approach was likely taken to insure that the claims were interpreted broadly enough to cover Mercedes vehicles.

The court recognized that under Ibormeith’s interpretation a person of ordinary skill in the art would need to devise his or her own method for determining driver drowsiness based on the factors. The court concluded that “[a] description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.”

Drafting Tips: Provide at Least one Non-Means-Plus-Function Claim Set
This is another in a string of cases where the court has found that means-plus-function claims are invalid in technology related patents where the description fails to provide a sufficiently detailed explanation of the algorithm/structure corresponding to the means clause in the patent. It is better to avoid means-plus-function based claim limitations in at least one claim set, if any. Drafting at least one claim or claim set not including a 112(f) or 112, sixth paragraph claim avoids indefiniteness problems associated with means-plus-function claiming.