Patent Archives - Page 11 of 16 - Eric Waltmire's Blog

June 10, 2014

What is Patent Pending?

When a patent application is filed with the United States Patent and Trademark Office (USPTO) covering a product, service, or portion of a product or service, the owner has patent pending status in the United States regarding that invention. Basically patent pending status means that a patent application has been filed in the United States. Patent pending status continues until the corresponding patent application is abandoned or until a patent is granted.

Patent pending status does not mean that the patent applicant will necessarily obtain a patent. It only means that a patent is requested through the filing of a patent application. It is possible that the USPTO will find that the subject matter of the patent application does not meet the requirements to be granted a patent. On the other hand, a patent application corresponding to a claim of patent pending may indeed ultimately received a patent.

The patent pending notice is designed to put the public on notice that an application on some aspect of the corresponding product or service has been filed and might result in a patent. Therefore the patent pending notice may be effective in deterring competition during the pendency of the patent application. This may be particularly true if the start-up and production costs of producing and or selling the invention are high. As a competitor might not want to heavily invest in producing and selling a product when there is a chance the competitor will need to shutdown that production when a patent is granted. However, it is also possible that competitors will try to compete during the patent pending period.

June 3, 2014

How to Stop Copiers During Patent Pending?

A patent applicant does not receive full patent rights until the patent office grants a patent. This article explores your options when a competitor starts copying your invention while your patent application is pending but before your patent is granted.

A person or entity that files a patent application on an invention has patent pending status until a patent issues or the application is abandoned. However, patent pending means that the patent applicant requested that the government grant a patent. Patent pending does not mean that a patent will necessarily be granted. The Patent Office might determine that a patent should not be granted because the application does not meet the requirements for obtaining a patent, for example, the application may be denied if the invention is not new.

The rights that are provided for patent holders are not the same as those provided for patent applicants during the patent pending phase. This is because not every application will become a patent. Therefore, it would not be appropriate to allow patent applicants to stop others from making, using, selling, and importing the invention (e.g. patent rights) described in their patent application because it is possible the Patent Office might later determine a patent should not be granted.

What can be done about copiers during the patent pending stage?

Provisional Rights
There is a section of the law that provides that a patent applicant can get a reasonable royalty for sales of products or services (e.g. copiers or would be infringes) that are covered by a resulting patent. These rights are known as provisional rights (35 U.S.C. 154 – the use of the word “provisional” is unrelated to “provisional” as used to reference a provisional patent application and does not depend on whether or not a provisional application was filed).

The problem with provisional rights as that there are many requirements that must exists in order for a patent applicant to have provisional rights cover a copier or would be infringer. These requirements include (1) the royalties only begin after your application is published and do not begin on the date the application was filed, (2) the copier must have actual notice of your application, which means they must receive a copy of the published patent application or have otherwise read it, (3) the claims in your application must be substantially identical when the patent application is granted as they were when the application was published, and (4) you cannot seek back royalties under the provisional rights section until you actually obtain a patent.

The most problematic requirement is the substantial identical requirement. Changes are often made to the claims during the patent prosecution stage where your patent attorney negotiates with the patent examiner regarding the scope of the patent protection that will be allowed in a resulting patent. Due to the common nature of such changes, generally recovery of royalties under the provisional rights section is unusual.

Notice letter
Even though provisional rights might be rare, you may choose to have a letter sent to a copier to put them on actual notice of your published patent application by attaching a copy to the letter. The letter might request that the copier stop or might invite the copier to a licensing discussion. This may produce results, especially if the startup and design costs are significant for the invention at issue. The copier might not want to invest in those costs if it would be forced to shutdown when you obtain a patent. However, the copier may choose to ignore your letter. There is no requirement that the copier respond. The copier may conclude that you will not obtain a patent or if you do obtain a patent it will not cover the copiers goods/services. Further the copier might try to redesign the product/service to avoid the subject matter of the patent application after receiving your notice.

Speeding Up Application Processing
Once you notice an infringer you might decide to request that the Patent Office speed up the consideration of your patent application. However, sometimes you can benefit from a delay at the patent office where a competitor builds a market and then you are able to take over the market or obtain licensing fees once a patent is granted.

Other IP Claims
It is possible that you might be able to make other intellectual property claims depending on your circumstances, such as claims of breach of contract, copyright infringement, trade dress infringement, trade secret misappropriation, or other infringement infringement.

Conclusion
It can be frustrating to see competitors selling copies of your product in the marketplace while a patent application is pending but before an application is granted. Occasionally a notice letter to the copier will be effective. In other instances you may need to wait until a patent is granted to take action.

Photo credit to flickr user David Goehring under this creative commons license.

June 2, 2014June 2, 2014

Inventor of Pay-Per-Click and Ad Auction Fails to Patent, Google Profits

We were ready to go public and we’re on fire, revenues going through the roof and all that, and were getting our IP portfolio together for the bankers, and everybody was like, ‘What patents do we have?’ And we didn’t have too many. … All we could do was patent everything else we could think of, a bunch of obscure things like the way we accept bids. These were silly patents, but the real patents would have been worth billions. … we learned our lessons about patent protection.”

said Bill Gross, founder of GoTo, who developed the concept of pay-per-click online advertising and real time auctions for pay-per-click ads before Google. These two concepts were used by Google in its search engine and made Google one of the most profitable businesses in history. GoTo failed to patent its inventions related to these concepts and potentially lost a lot of money as is explained below. This is the second post about Google based on information from Steven Levy’sÂ book In The Plex: How Google Thinks, Works, and Shapes Our Lives. The first post is here.

Google’s Auction Based on Ad System from GoTo
In 2000, Google’s venture capitalists were pressuring Google to make more money. So, Google founders, Larry Page and Sergey Brin, instructed Google employee Salar Kamangar to look into ways to make more money with the ad system. Eric Veach and Kamangar decided to use auctions to sell ads next to search results. And they got this concept from a search competitor called GoTo.

GoTo was founded by Bill Gross. Gross implemented an auction to determine the price that an advertiser would pay placement when a given keyword was searched. The higher the bid, compared to other bidders, the higher on the page your advertisement would appear in the search results.

The difference between GoTo’s implementation and how Google implemented the auction was ad placement. Gross’ implementation intermingled ads with organic search results. Many people disliked the intermingling, including Page and Brin. Google provided ads on the right and at a block at the top of the page, but not intermingled in the list of organic search results.

In addition, Gross implemented pay-per-click advertising. Before pay-per-click, most ads were sold on a pay-per-impression basis. An impression is when a person saw the ad. So regardless of whether a person clicked on the ad, the advertiser was charged when a person saw the ad.

GoTo Waits Too Long to Apply for a Patent & Is Barred
In 2000, “We were ready to go public and were on fire, revenues going through the roof and all that, and were getting our IP portfolio together for the bankers, and everybody was like, ‘What patents do we have?’ And we didn’t have too many,” said Gross. GoTo missed the one-year bar.

A patent application generally must be filed within one year of an offer for sale, a sale, or a public disclosure of the invention. This is referred to in the U.S. as the one year bar. At the time GoTo realized it needed to file patent applications on its core features of real-time auctions and its pay-per-click ad system, the system had already been disclosed for more than one year. Therefore, GoTo was barred from filing patent application(s) on those features and lost the ability to protect those core features with a patent(s). All GoTo could do “was patent everything else we could think of, a bunch of obscure things like the way we accept bids. These were silly patents, but the real patents would have been worth billions” Gross said.

The one-year bar in the U.S. can be problematic for independent inventors, startups, and small businesses because often you will want to determine whether there is a market for the invention before spending money on the patent process, but patent law encourages you to file a patent application before you make your invention public and not to rely on the one-year grace period (if you are interested in foreign protection, many foreign countries provide no grace period).Â Here, we don’t know the reason why GoTo missed the one year bar, maybe they didn’t think about patenting, maybe they didn’t realize the value of the core technology within one year, or maybe they didn’t have the resources, etc. Whatever the reason, the one year bar is a common problem, not only for GoTo, but for inventors and companies generally. Patent law encourages early patenting. This post provides ideas for patent protection based on the available financial resources.

Google Turns Down Goto’s Requests for Merger; Goes Alone
Later in 2001 Gross suggested to Page and Brin that GoTo and Google merge. But according to In The Plex, “Kamangar successfully argued against any kind of acquisition, saying that Google could do it alone.”

However, when Google implemented its own auction it implemented it as a generalized second-price auction, which is different from the direct auction the GoTo used.

Further the Goto’s (now named Overture) method required bidding for each slot on the page. So if you wanted to bid for the 1st position and the second position you had to place two bids, one for the first and one for the second. In Google’s system, you could place one bid and receive theÂ position that corresponded to that bid at the end of the auction. Also, the Google system factored not only the bid price but quality of the ad to determine the location of the ad on the page.

Improving on Other’s Work
So while the GoTo implementation was different in some ways from the system that Google built, it is possible that if GoTo had filed patent applications on the core features, that the resulting patents could have covered Google’s system and given GoTo better leverage in merger negotiations with Google. Who knows how much they would actually be worth, but Gross said, as quoted above, they would have been worth billions.

Some might argue that Google implemented a better system, with the second price auction, and therefore Goto should not be rewarded. But, Google started with GoTo’s invention and then improved upon it. The patent system does reward inventors when others use the invention regardless of whether its the original or an improvement. See the basic wheel v. spoked wheel example for more on this concept.

Lessons about Patent Protection
Later Goto (then called Overture) sued Google on the “silly patents.” And Yahoo eventually acquired Overture. Google settled those suits, but for much less than if Goto had patents on its core technologies.

According to In The Plex, Bill Gross was positive when addressing the fact that his ideas involving pay per click and ad auctions had made billionaires at Google, but not at his company. Gross said, “I feel we won…There was a satisfaction in braking the code. We originally invested $200,000 in GoTo, and when we sold Overture, we made $200 million. That’s a pretty good return. And we learned our lessons about patent protection.”

May 30, 2014

What happens after the patent application is filed?

What happens after a patent application is filed depends on whether a provisional patent application or a non-provisional patent application was filed. If a non-provisional patent application is filed, once the patent office receives the complete patent application they will place your application in a queue to be examined by a Patent Examiner.

Non-Provisional Applications – Timing
Depending on the backlog of patent applications to be examined, it could take about 21 months, on average, for an Examiner to begin the examination process on your patent application. This time frame can be shortened if a priority examination is requested and granted. When the Patent Examiner picks up your application for examination, the examiner will do a prior art search (a search of the prior patents and patent applications and other sources of prior art) to determine whether your invention, as set forth in the claims of your patent application, is new and otherwise meets the requirements for patentability.

The Patent Prosecution (Negotiation) Stage
At least some claims are rejected (or another objection is raised) as a result of the first substantive examination in about 77 to 95 percent of all patent applications. When claim rejections or other objections are found by the examiner, the examiner will issue an office action explaining the reasons for the rejections and objections.

Many patents result from patent applications that received at least one rejection in an office action after the first substantive examination by the examiner. In most cases, the office action is not the end of the road, but rather the beginning of a negotiation (known as patent prosecution) between the patent attorney, on your behalf, and the Examiner at the USPTO as to the scope of the protection that will be granted over your invention in a resulting patent.

If you decide you would like to respond to the office action and proceed forward with the patent application, we will review the office action and advise you of the options for responding and the strategy corresponding to each option. We will endeavor, where possible, to explain the relative likelihood of success and cost with each option.

There are a number of ways to respond to an office action. One way is for the attorney to draft a written response to the office action which amends the wording of the claims and/or makes arguments on behalf of the patent applicant on why the application should be allowed to issue into a patent. Another means that can be employed is for the patent attorney to setup a telephone interview with the examiner were the attorney can discuss the issues raised by the Examiner in the Office Action and seek to place the patent application in condition for allowance.

After the first written response is filed, the Examiner, if convinced, may allow the patent to be granted. However, the Examiner may issue a second office action responding to the attorney’s written response. Where again, the attorney will advise the client regarding the options for responding in a manner similar to the first office action. The attorney may then prepare a written response or hold a telephone interview or both. The office action issuance and response can occur any number of times, if government fees are payed to continue the prosecution, depending on the client goals.

Sometimes patents are allowed at the first office action, after the first office action, after a one or more subsequent office actions, or after appeal. In certain circumstances, an appeal can be pursued to the Patent Trial and Appeals Board (PTAB), if the Examiner maintains a position which is incorrect under the law. Further appeals to the courts can be pursued, although relatively rare.

Whether your patent application is granted relatively quickly depends on many factors including: the goals of the client, the scope of protection sought, the degree to which the subject matter area of the invention is crowded (e.g. many similar inventions disclosed in the previously), how close your invention is to other inventions in the field, the disposition of the Examiner, and whether a patent search was performed before that application was filed, among other factors.

Provisional Patent Applications
Provisional patent application are not examined by the U.S. Patent and Trademark Office. Instead, they act to provide you with a priority filing date with respect to the subject matter disclosed in the provisional patent application. In order to receive a patent based on the subject matter disclosed in a provisional patent application, a non-provisional patent application must be filed within one year of the filing of the provisional application and make a claim of priority to the provisional application. Then that subsequently filed non-provisional application will proceed as described above. For more information on whether to start with a provisional or non-provisional click here.

May 23, 2014May 23, 2014

Risks of Waiting: Independent Invention & Google PageRank

Questions often arise about the risks of waiting. Waiting to get started, waiting to file a patent application, waiting to launch a product or service, etc. The risk is that someone else is independently working on the same problem or the same idea and beat you to the market or the patent office or both. What’s the chance of someone independently inventing in your space?Â It is impossible to know for a particular circumstance, but we do know that independent invention around the same time happens.Â According to In The Plex: How Google Thinks, Works, and Shapes Our Lives, Larry Page of Google was not the only person in 1996 to recognized that the link structure of the internet was the basis for a powerful way to find information on the web. The resulting algorithm based on link information allowed Google’s search results to be much better than other search engines at the time it was introduced. Two others were working on this idea, but Google was the first to make it to market.

Adjacent Possible and Independent Invention
As Steve Johnson noted in his book Where Good Ideas Come From sometimes when a scientist or inventor comes up with a new idea or invention, they learn that one or more others have independently come up with the same invention at about the same time period, such as within a year. Johnson notes that this is because the invention becomes “an adjacent possible” once founding or necessary elements or parts are created, discovered, or otherwise available.

To demonstrate the idea of the adjacent possible, Johnson notes that if Youtube was created 10 years earlier in 1995 it would have failed. This is because in 1995 most web users were on slow dial-up connections and it could take an hour to download a standard Youtube clip. In 1995, Youtube’s innovation was not within the adjacent possible, but ten years later, with broadband internet and Adobe’s Flash technology, it was.

PageRank
As In the Plex explains, Larry Page realized you can estimate the importance of a web page by considering the web pages that link to it. Page called his resulting algorithm based on linking “PageRank.” Page said, “In a way, how good you are is determined by who links to you and who you link to you determine how good you are…”Both the number of links and the quality of the links mattered. If a respected web page linked to a page, that link would be worth more than a link from a less well-known or respected website.

In addition to considering the number and nature of links, the anchor text used for the link is considered. Early search engines would provide results based on the content of a particular page. Therefore the results to a search for “newspaper” might not include the most relevant results, such as the New York Times website, if the New York Times did not say “I’m a newspaper” or otherwise use the word “newspaper” on its website. This caused search engine results to be poor and allowed the best result to be buried under relevant results. If a web page used the word “newspaper” to link to the the New York Times web site, then newspaper is the anchor text. And if enough and/or important websites link using that anchor text, then search results for “newspaper” would include the New York Times website. Page’s algorithm ranked each web page based on the incoming links, anchor text, and other factors. The resulting ranking of each page was used to determine which search results were returned for a particular web query, which vastly improved the relevance of search results as compared with other search engines at the time.

Others Independently Discovered Linked Based Ranking
Jon Kleinberg, a postdoctroal fellow at IBM’s research center, discovered that the link text, e.g. what a linking page said when linking to anther site and how many pages linked to a particular site, was useful in determining the relevance of a particular page. While having the same core idea, Kleinberg and Page each approached it differently. Kleinberg wanted to understand network behavior, Page wanted to build something that helped people in searching the web. Kleinberg said “all sorts of IBM vice presidents were trooping through Almaden to look at demos of this thing and trying to think about what they could do with it.” But they couldn’t figure out what to do with it.

Another person,Yanhong (Robin) Li, in 1996 saw the link between the ranking of scientific papers based on the number of other papers that cited them and ranking web pages in the same way. He came up with a search method that calculated relevance from both the frequency of links and the content of anchor text, which he called RankDex. Li described this to his bosses at Dow Jones, but they didn’t do anything with it. Li said, “I tried to convinceÂ them [Dow Jones] it was important, but their business had nothing to do with Internet search, so they didn’t care.”

Li first filed a patent application himself in June 1996 after reading a self-help patent book. But then Dow Jones hired a patent attorney and filed another application on the same invention in February 1997, which resulted in US Patent No. 5,920,859. A patent application for Page’s Page Rank system was filed January 1997, which resulted in U.S. Patent 6,285,999. As you can see, the patent application were filed within about a month of each other. Li left Down Jones and eventually started Baidu in 2000, which is now the largest Chinese search engine.

Conclusion
These three individuals, Page, Kleinberg, and Li, were each independently working, without knowledge of the others, on one of the most important developments in improving internet search results, and in turn, improving the utility of the web. While it may be possible that you can sit on your ideas for years without consequence, waiting carries the risk that someone else is independently working on the same problem or invention as you. The patent office, and sometimes the market, rewards first movers.

May 19, 2014May 19, 2014

When does my patent expire?

Generally for newly issued patents, the patent will expire 20 years from the earliest filing date. However, the patent will expire earlier if maintenance fees are not paid. Maintenance fees must be paid to the United States Patent and Trademark Office (USPTO) at 3.5, 7.5, and 11.5 years after the date the utility patent issues. Maintenance fees are not required for U.S. design patents; they are required for utility patents. The USPTO provides a six month grace period after the 3.5, 7.5, and 11.5 year due dates, within which the maintenance fee can be paid with an additional surcharge.

Some patents receive a patent term extension from the USPTO, if under certain circumstances the USTPO takes too long to examine the patent application and grant the patent. Patent term extension periods are generally shown on the first page of a patent. You should seek advice of a patent attorney when trying to determine whether a particular patent is expired.

The maintenance fees are set by the USPTO and change periodically. The maintenance fees increase progressively so that the 7.5 and 11.5 year fees are greater than the 3.5 year fee and the 11.5 year fee is greater than the 7.5 year fee. This progressive fee structure incentivizes patent owners to let their patent expire unless they are generating a certain financial benefit to the patent owner at the time each respective maintenance fee becomes due.

Photo credit to flickr user kermitfrosch under this creative commons license.

May 16, 2014May 16, 2014

Patentability v. Non-Infringement: If I Have A Patent How Can My Product Infringe?

How can a patent be granted over an invention and yet the commercialization (manufacture or sale) of the invention infringe a prior patent? A common misconception about a patent is the belief that a patent is a permission slip that allows you to make or sell your invention. But this is not the case. A patent is not a grant of permission for you to make your invention. Instead a patent provides a negative right. This means the patent allows you to stop others from making, using, selling, offering for sale, and importing your invention in the United States. Therefore in certain situations the commercialization of a patent invention can infringe a prior patent as explained below.

Basic Example: The Wheel
Here’s an example with a very basic invention to illustrate the concept. John invents the wheel. John files a patent application on the wheel and the patent claims “a circular surface 10 that orbits a hub 12.” The patent office grants John a patent because no one else had previously disclosed such a wheel in the prior art.

The Improvement: Spokes
Bob sees John’s wheel and decides to improve on it. Bob decides rather than having a solid wheel, which is how John’s wheel is made, Bob is going to take all the weight and material out of the wheel and connect the outer surface 20 to the hub 22 by a number of spokes 24. Bob applies for a patent on his spoked wheel. The Patent Office grants Bob a patent on his spoked wheel having a claim of: a circular surface that orbits a hub, where the circular surface is connected to the hub by a plurality of spokes. The patent office grants this patent because the prior art did not disclose a circular surface that is connected to the hub by a plurality of spokes. This is the new component. Since there is something sufficiently new in Bob’s invention, the Patent Office grants him a patent on it.

Infringement Analysis
Can Bob make his spoked wheel without infringing on John’s wheel patent? As explained above, a patent is not a grant of permission to create the corresponding product of the invention. So if John claims infringement, Bob can not win in defense by pointing to Bob’s patent. To determine whether Bob’s spoked wheel would infringe John’s wheel patent, we have to compare Bob’s spoked wheel to the claims of John’s wheel patent. As explained above John’s wheel patent claims “a circular surface 10 that orbits a hub 12.”

Does the spoked wheel have a circular surface that orbits a hub? Yes. The spoked wheel has a circular surface 20 that orbits a hub 22. A product infringes a patent if the product has each and every element of at least one claim of the patent (or an equivalent element, under the doctrine of equivalents, but that is outside the scope of our discussion here). It doesn’t matter that Bob’s spoked wheel has more elements than John’s patent claim, e.g. the spokes. Infringement is avoided in most cases by removing elements that are claimed, and not by adding elements that are not in the claims. The patent claim(s) set out the minimum that is necessary for a product/process to be covered by that claim. So John’s wheel patent may be avoided by removing the circular surface and making it square, for example, but that won’t function very well as a wheel. Further John’s wheel patent might be avoided by eliminating the hub, but then it would be difficult to connect the wheel to other things, e.g. wagons.

You can see that a patent having broad claims can cover variations of the invention that might not have been known at the time of the invention. The claim of John’s wheel patent does not say a circular surface that orbits a hub, where the area between the circular surface and the hub is solid or filled. Such a “solid” limitation would narrow John’s patent. The solid limitation would not cover Bob’s spoked wheel because the area between the circular surface and the hub is not solid, but instead is open with intervening spokes. However, John’s Patent claims were well drafted to not include too many unnecessary limitations. This also demonstrates how critically important claim drafting is in writing a patent application. Sometimes one word in the claim can make the difference between your patent covering another parties product or not.

In this example case, no one can make a spoked wheel since the commercialization of Bob spoked wheel would infringe John’s patent. Also, Bob has a patent on the spoked wheel so that John and others can’t make a spoked wheel. If a third party, Adam, started making a spoked wheel, Adam’s spoked wheel would infringe both Bob’s spoked wheel patent and John’s wheel patent. The only way that spoked wheels can be made and sold during the life of John’s patent, is if Bob and John come to a licensing agreement. Such a licensing agreement could provide that Bob will pay John a royalty on each spoked wheel sold until John’s patent expires. When John’s patent expires, then Bob can sell his spoked wheel without John interfering.

While this example provides that Bob invented an improvement to John’s wheel after seeing it, the results would be the same for the case where Bob invented the spoked wheel without seeing or knowing of John’s wheel.

Conclusion
As the above example shows, the Patent Office does not care if your invention would infringe a prior patent. They only ask whether the invention provides something that is sufficiently new. Therefore, your patent will not protect you from claims of infringement from others. A patent is an offensive weapon not generally defensive (except in certain strategies not relevant to this example). The only way to know whether your product will infringe a prior patent is to have a clearance or non-infringement search completed.

April 30, 2014July 6, 2023

Filing an International PCT Patent Application

Generally, 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.

Cost
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 $3000-$6000. 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 often yearly patent application fees and patent annuity fees to be paid in each country.

Conclusion
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.

March 13, 2014January 24, 2023

Viewing Patent Application Status and History at USPTO Online with PAIR

Update: The USPTO retired Public PAIR on August 1, 2022. The file history and status of a US patent or published patent application can be accessed via USPTO’s Patent Center at https://patentcenter.uspto.gov.

The 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.

Access and Logging in
Bibliographic Data (Application/Patent Status)
Transaction History
Image File Wrapper (Downloadable Files)
Continuity Data
Maintenance Fees
Published Documents
Address & Attorney/Agent
Display References
Conclusion

1. Access and Logging In
Currently you can access public PAIR by going to http://portal.uspto.gov/pair/PublicPair. 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.Â 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 theÂ 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.

March 10, 2014

How Can A Delay in Getting A Patent Help Me?

Many 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 inventorâ€™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 inventorâ€™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 â€œpatent pendingâ€ 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 inventorâ€™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.