Protecting Unpatentable Inventions

Not every invention is patentable. Yet, inventors and companies may decide to proceed to market with an unpatentable products or services. This article will explore other intellectual property protection options that exist beyond patents.

Build a Brand
In many cases customers purchase a product or service because it is provided under a recognized brand name. This may be true regardless of whether the product or services is patented. Therefore you may decide to choose a strong trademark for the product or service. Then you can market that trademark so that customers associate that trademark with the type of product or service you are selling. The goal is to build a brand so that consumers will seek out that brand when purchasing your goods or services. In this way customers will choose your brand of product, even if there are competitors selling the same or similar products/services.

The brand can be built around a product/service name or around a company name or both. If the names used in your branding are unique (they should be), then you can seek to obtain a federal trademark registration which will provide additional benefits. The trademark rights built around your product or service will not prevent competitors from copying the product or service. Yet it will prevent them from using your trademark or a similar mark. The strategy of building a brand is designed to draw customers to your brand regardless of the competition.

It may be possible to protect your invention under copyright law. However, copyright protects the expression of an idea but not the idea itself. Therefore if you write software creating a new type of application, copyright protection will protect you from direct copying of the software. But it cannot prevent others from copying the idea and writing their own implementation of that idea. The copyright protection extends somewhat beyond identical copying, but the point is that copyright provides narrow protection of the expression of an idea as compared to patents.

Trade Secret
When an invention cannot be patented, it might be protectable as a trade secret. Not all inventions are capable of being protected as a trade secret. A trade secret may generally be understood as something that has economic value, is not generally known, and is subject to efforts to maintain it as a secret. Therefore, if the invention is embodied in a product that is distributed to the purchasing public and whom can reverse engineer or discover the invention by inspecting the product, then it is unlikely that the invention can be protected by a trade secret. However, if the invention is capable of being maintained in secrecy, then trade secret protection might be relied on.

It is possible to draft a contract that requires the party receiving the invention to keep it confidential and not disclose it to others (similar to an NDA). This is more likely to occur with business to business transactions where the sale involves significant money or resources to execute or implement. The other party would need to agree to such a confidentiality term.

This does not work with consumer goods because the product often needs to be marketed broadly and public ally where the invention details may be disclosed.

There are a number of alternative approaches to protection when your invention is not patentable. While each alternative is not a complete substitute, the options above may provide some protection when proceeding with a product or service in the absence of a patent, depending on the circumstance.

Problems with Requiring an NDA Before Pitching Your Invention

At the outset of product / service development there is often a tension between the desire to keep the invention confidential and the desire to know whether there will be sufficient interest in the invention from customers or those who might make and sell it to customers. Therefore the issue arises as to how to protect an invention early in the product development, partnering, or sale process.

There are three ways of proceeding: (1) first file a patent application before any disclosures to third parties, (2) disclose to a third party only after obtaining a signed nondisclosure agreement (NDA), (3) disclose without an NDA or application filed and hope for the best. The first is the most preferred and the last approach is not recommended.

Difficulties with NDAs Before Sales Pitch
Disclosure of an idea to another party that is under a written obligation (e.g. NDA) to maintain that idea in secret, generally will not be considered a public disclosure that would negatively impact your patent rights. However, if you are attempting to approach a company to (1) convince them to make and sell your product and give you a royalty or (2) to sell a product you will make, it may be very difficult to get them to sign an NDA or other legal agreement before you tell them anything about your invention.

This is true because, unlike when you are approaching an engineering firm, here you are not offering to pay the other party any money. You are essentially saying, “I have a great product or service that will make you money, but before I tell you anything about it, I need you to sign this legal agreement.” This is a difficult selling approach.

If they sign that agreement and then find out that your product is very similar to something they are already working on this creates a problem because you may assert that when they come out with that product that they copied your invention. Or if they just don’t like the idea, they are still encumbered by the NDA for any further developments. It would seem that there’s little incentive for them to sign an NDA with you, especially if they receive many similar solicitations from other inventors or companies. Therefore, if your sales pitch starts by requiring the recipient to sign a legal agreement before further discussions, you may not have very many takers.

If you do get the other party to sign an NDA, you should know that NDA’s are not self enforcing. Therefore, if the other party breaches the NDA it will be necessary for you to spend money in the form of legal fees to enforce the agreement or to recover damages. As such, you should investigate the trustworthiness of the other party.

Patent Application Filed First
The first option, having a patent application filed first, is the safest approach. Patent law encourages early filing of patent applications. This assumes that the invention is develop sufficiently to support a patent application filing. See this article on whether your product needs further development before filing a patent application.

If your product needs further development and such development requires the assistance of outside engineers or product developers, then you should use a written nondisclosure agreement when engaging such outsiders to help develop the invention. Also, you should ensure that the terms of any engagement with such providers specifies that you will own any developments and inventions that they might create under the engagement. Outside engineers and product developers are generally more willing to sign an NDA, because you are usually paying them money in return for their services. Further, their business revolves around developing products and they should be used to signing such agreements.

Regarding marketing, if a patent application, preferably one drafted by a patent attorney, is filed that adequately covers your invention then from a patent perspective, you are no longer required to keep your idea secret. You may instead may go exploit your idea publicly. In fact, as it can take years to obtain a patent, inventions are usually commercialized and marketed after a patent application is filed but before a patent is granted.

It can be difficult to engage in a sales approach with another when your first request is to sign a legal agreement before providing information. Having a patent application filed before making a sales pitch is generally the best approach. Service providers, such as engineers and developers, are generally more likely to sign an NDA as they are being paid for their work and they may regularly assist in invention development.

Can I Add New Invention Developments to My Previously Filed Patent Application?

Many times a company or individual will further develop a product / service / invention after a patent application is filed on the original invention. In that scenario the question arises whether the further development (new developments) can be added to the original patent application or otherwise be protected by the original patent application. Generally, new matter, not supported by the original application, cannot be added to a patent application after the application is filed. However, there are a number of ways to protect new developments after a patent applications filed on the original invention.

Covered by the Original Patent Application
The first step is to determine whether the new developments are covered by language in the originally filed patent application. Your patent attorney will generally attempt to draft a patent application that covers your idea and provides reasonably broad protection at the outset within the bounds of known prior art. Therefore your first application might be written in such a way as to cover the new development. If the original application was written broadly enough to cover the new developments a decision might be made that an additional patent application filing to cover the new development is not necessary.

It is sometimes a difficult decision whether to file a new application with the new development. It’s possible that the original patent application includes broad language that would cover the new development but the original application does not include specific details describing all the various components of the new development. In this scenario where the new developments are broadly covered but not specifically described, there is a risk that the broad language can not be used in a claim because of limiting prior art that requires more specific language not coving the new development.

If they novelty search was performed, the patent attorney may know well the boundaries of the prior art in order to assess whether or not the specific details of the new development are necessary in a patent application. However if a search was not performed it is oftentimes not known the prior art that the examiner will use, and therefore not known whether more narrow specific language would be necessary. In many cases, a new application can be pursued out of caution if the inventor/company determines there is a business case justifying the costs of a new application.

New Application
If it is determined that the original patent application does not cover the new development or that the new development has an importance such that additional details regarding the new development should be included in a patent application, then filing a new patent application should be considered. Often times such a new patent application will include much of the subject matter of the original application in addition to the new developments.

Subsequent Provisional Application
If the original patent application was a provisional patent application and the new development has come to light within one year of the filing date of the original patent application then there is an option to file the new development as a provisional patent application. It is possible that many provisional applications can be filed on new developments during one year beginning from the date of the first application filed.

On or before the one year anniversary of the filing date of the first provisional application, a non-provisional application can be filed with the subject matter of the first and one or more intervening provisional applications. In other words, all of the provisional application subject matter can be rolled into one non-provisional application as long as that one non-provisional application is filed within one year of the earliest filed provisional application. Alternatively, multiple non-provisional applications can be filed containing the subject matter of corresponding provisional applications.

Continuation-In-Part Application
Often times it is suggested to file a continuation-in-part (CIP) patent application so that the new subject matter can be included with the subject matter of the originally filed patent application while claiming priority to the original application. This can be done in the case that the originally filed patent application was a non-provisional application.

However many times filing a CIP application provides the inventor or owner with no additional benefits and shortens the patent term of the resulting patent, when compared to filing a new application that does not claim any priority to the original patent application.

CIP applications may be advisable when the application will include claims directed to both the original subject matter and separate claims directed to the original subject matter plus the new developments. Determining whether a CIP is appropriate is a complex issue that involves the determination of claim strategy and filing dates. Therefore you should work with your patent attorney to determine whether a CIP is the right strategy for you.

Non-Provisional Application
If the new development is new and patentable over the disclosure in the original patent application, then a new non-provisional application could be filed containing the new developments without claiming priority to the original application.

New matter not supported by the original disclosure in the original patent application generally cannot be added to that original patent application after the patent application is filed. However, as explained above there are numerous options for covering new developments that arise after a first patent application is filed on the original invention. You should consult with a patent attorney on whether the subject matter of your new development is covered by the original patent application filed, or whether filing a subsequent provisional, filing a continuation in part application, or filing a new non-provisional application is the appropriate path for your circumstance.

Do I Qualify for Small Entity Fees at the USPTO?

The USPTO has three fee categories: large entity, small entity, and micro entity. Previously I wrote about micro entities that usually get a 75 percent reduction from the large entity fees. If you don’t qualify as a micro entity, you might qualify as an entity, which usually gets you a 50 percent fee reduction.

USPTO rule 37 C.F.R. 1.27 defines which persons, small businesses, and nonprofit organizations qualify as a small entity. An owner of a patent application or a patent is entitled to small entity status only if, the owner is:

  • A person … meaning any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
  • A small business concern . . . meaning any business concern that:
    • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
    • (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
      • Section 13 CFR 121.802 provides that a small entity small business concern is an entity that has 500 or less employees, including affiliates and,
      • has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
      • The definition of who counts as an employee and an affiliate for the purpose of determining the 500 employee limit is defined by several Small Business Association regulations. See, e.g. 13 C.F.R. 121.103, 121.106. If your business, including employees of any affiliate, subsidiary, or parent company, has near 500 employees, it is best to pay the large entity fee.
  • A nonprofit organization … meaning any nonprofit organization that:
    • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
    • (ii) Is either:
      • (A) A university or other institution of higher education located in any country;
      • (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
      • (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country ( 35 U.S.C. 201(i)); or
      • (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.

Federal Government
If a person or small business concern licenses rights in an invention to the federal government/agency, then depending on the circumstances that person or small business concern may or may not qualify as a small entity. Generally the federal government or agencies of the federal government are not considered small entities. MPEP 509.02. Therefore, licensing to the federal government might prohibit you from claiming small entity status.

However, there are some exceptions for certain licenses. For example, a “person” under the above definition that licenses rights to a federal agency under Executive Order 10096 may still qualify as a small entity. Further a small business concern or non-profit may still qualify as a small entity if they license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202 (c)(4).

Loss of status
Once small entity status is claimed it will continue in an application until an issue fee is due or maintenance fee is due. 37 C.F.R. 1.27(g)(1). Therefore, a new determination of small entity status needs to be made at the time issue fee is due or maintenance fee is due. A notice of loss of small entity status must be filed, if such status is lost, when paying an issue fee or maintenance fee. The paying of the large entity fee alone is not sufficient. Id. at 1.27(g)(2). A new assertion of small entity status is required in any continuation or divisional application. MPEP 201.06(c)(VIII).

Erroneous Claims
Claiming small entity status when an applicant or patent owner is not entitled to it could be considered fraud on the patent office and could negatively impact the owner’s patent rights. 37 C.F.R. 1.27(h). Therefore it is important to ensure that a claim for small entity status is made only when the owner qualifies.

File Patent Applications Early and Do Not Rely On AIA Grace Period

Before the America Invents Act (AIA), an inventor had a one year grace period between the time of first public disclosure by the inventor of the invention and the time a patent application was required to be filed.  A grace period is provided under the AIA, but for the reasons explained above, the best practice is to avoid relying on the grace period and to file an application early before public disclosures or uses.

Explaining The Grace Period
The grace period provided in 35 USC 102(b)(1)(A) provides that the inventors own disclosure made less than one year before the filing of a patent application will not be prior art against the inventors patent application. Sections (b)(1)(B) and (b)(2)(B) provide that if the inventor (or a third party who obtained the subject matter from the inventor) first discloses the subject matter, then later disclosures (or later filed third party application) of the same subject matter within a year will not be prior art against an inventor’s later filed application on that subject matter. Section (b)(1)(B) and (b)(2)(B) therefore purportedly provides a later filing inventor the ability to overcome a prior disclosure (or patent application) by a third party.

For example, if an inventor Joe publicly disclosed an invention having A, B, and C. Then a subsequently filed US patent or published application by another inventor Bob discloses A, B, C, and D. Under the 102(b) grace period exception, only element D of Bob’s intervening application would be prior art against Joe’s later filed patent application. Bob’s application could not be relied to reject A, B, and C of Joe’s patent application.

But there’s a catch.

Narrow Grace: Only Identical Subject Matter According to USPTO
The USPTO interpreted the law to require the third party’s disclosure be the “identical subject matter” of the inventor’s invention. 78 CFR 11061. This is a narrow view of what prior disclosures can be overcome. Under the prior law, any disclosure including both identical disclosures and disclosures that were not identical, but were an obvious variant, could be excluded as prior art by proving an invention date (with diligence) before the date of the third party disclosure.

Now, under the AIA, the USPTO concluded that the grace period does not cover obvious variants only identical subject matter disclosure. There is debate whether the USPTO is correct. However, it will likely take years before a court rules on whether the grace period should cover obvious variants.

In response to comments made during rule making, the USPTO clarified that there is “no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal).” 78 FR 11035, 11079. The USPTO further stated that there is “no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply. id. The USPTO further stated, “the exception [grace period] applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor.” 78 FR 11035.

So the disclosure does not have to be verbatim, but how far from verbatim can we go? In other words, how “close” does the disclosure need to be to the inventor’s invention for the grace period exceptions to apply? No one knows at this point.

The Problem Illustrated
How would a problem arise? Consider this example. Matt publishes the details of his invention on the Internet. Jake reads Matt’s disclosure and thinks of a way to improve Matt’s invention in an obvious way. Jake publishes the obvious improvement to Matt’s invention within one year of Matt’s first publication. Matt then files a patent application on his invention within one year of his first publication of his invention on the Internet.

The USPTO might reject Matt’s patent based on Jake’s publication, given that Jake’s publication (of the obvious improvement) was not identical to Matt’s invention. This is true even though Jake’s improvement is based on Matt’s first publication of his invention on the Internet.

Conclusion: File Early
Given the USPTO’s interpretation of the grace period exception, it is important to file a patent application early. Further, if there is ongoing development for an invention, the ongoing developments should be covered by subsequent patent filings as they are invented or refined so that the new subject matter will have the benefit of an early filing date. The problems is that you don’t know what others might independently be doing independently or after seeing your disclosures.

If you have disclosed your invention, you’re not necessarily out of luck given the grace period. But you are in a riskier position. The safest approach is to file early and do not rely on the grace period.

Invention Evaluation Factor: Dancing on the Edge of Failure

SONY DSCHow do you know whether your project / invention is worth continuing to pursue or whether to start in the first place? There are many factors that you might consider when determining whether to pursue a project / invention. One question you might want to include in the mix is whether your invention / project makes or has ever made you feel like you are dancing on the edge of failure.

I consume a lot of content on the topic of innovation and entrepreneurship. Recently I was listening to a podcast series called Seth Godin’s Startup School. There Seth provided that great characterization “dancing on the edge of failure,” which is applicable to the important engaging work carried on by innovators.

Dancing on The Edge of Failure. In episode 10 of the podcast, titled Tactics, Seth talks about finding one’s purpose. Seth asserts that you really feel alive and engaged–not because you were born to do a certain thing or endeavour, such as playing the guitar, paving the street, or running a kids shelter–but because you are dancing on the edge of failure in a particular endeavor.

I think “dancing on the edge of failure” is a great descriptor for challenging and engaging pursuits of life. The image created by the phrase “dancing on the edge of failure” is a mix of excitement combined by the seriousness and focus it takes to be on an edge, especially an of edge of failure. You might succeed or you might not, but the opportunity for success is energizing and focusing at the edge. Endeavouring on a project that is not safe and known brings a level of excitement and interest. Dancing on the edge of failure is not meant to imply recklessness or a lack of planning and due diligence, but rather effort on a challenging endeavour that is not a sure bet.

I see the effects of dancing on the edge of failure in my innovator and entrepreneurial clients. The mix of energy, excitement, and hard work brings an invention from conception to market. Clearly, new inventions generally have a higher risk of failure than the tried and true.

Innovation at the Edge. Innovation often occurs at the edge. This is because if you’re too far outside of the box, the components necessary for your innovation to be adopted might not be available or your innovation might not be accepted by your customer base because its too far out there. On the other hand, if your innovation is in the box, it may not be sufficiently new to generate interest or success. Therefore success is often found at the edge.

I transcribed the following excerpt of the podcast where Seth talks about dancing on the edge of failure:

[14:14] I think there’s a reason its hard to scale. ….  [14:40]  I don’t think there are many answers here, I think largely there’s one. And this is what the Icarus Deception is about. I think that the purpose for just about everybody, when they feel like they have achieved their purpose, has nothing to do with to play the guitar, to pave the street, to run a kids shelter. I mean none of that is in our DNA, right? I think it is to dance on the edge of failure. I think that when people are dancing on the edge of failure and their growing and there is a void over there but they keep moving forward—that’s when we feel alive as people. There’s a few people that don’t have that. Its been boiled out of them or raised out of them or whatever. But generally it’s that getting close to the precipice that I think is ingrained in who we are as people.

So when you talk in the persuasive way you have, lots of people sign up for the Linkedin group. But then, they are safe to quit. It is easier to quit than it is to stare down the abyss. Its easier to quit then to do that dance. . . . . That in fact our purpose is in finding the thing that we did that we didn’t think would work an hour ago and now its working well enough to wonder what the next thing is and keep that cycle going. And the magical ironic punchline is the internet is making that easier than ever for 1.5 billion people. The explosion we are about to see, I think, is not the explosion of industrial job creation it’s the explosion of people who figure out, whether there is money involved or not money involved, how to do that scary thing, whatever that scary thing is.

[Seth Godin’s Startup School, Episode 10, Tactics (emphasis added)]

Innovation often happens through those who are willing to dance on the edge of failure. What projects allow you to dance on the edge of failure?

Photo by flickr user thebarrowboy licensed under this creative commons license.

Micro Entity Status at USPTO

The American Invents Act (AIA) authorized a new fee category, micro entity, directed to reduce fees for individual inventors and small companies. Previously, there were only two fee categories: Large entities that pay full fees, and small entities that usually pay half the fees of the large entity. Micro entities are provided a 75 percent reduction from the large entity fee rate.

To qualify as a micro entity, the applicant must meet all the items under one of the two sets rules.

Rule Set 1 (Income Limit):

  1. Each applicant qualifies as a USPTO-defined small entity under 37 C.F.R. 1.27.
  1. Each applicant is not named on more than four previously filed applications. However, the following application do not count: (a) applications that the applicant has assigned, or is obligated to assign, ownership rights as a result of previous employment (not current employment), and (b) the application was filed in another country, was a provisional application, or was an international application for which the basic national fee was not paid.
  1. Each applicant and joint inventor does not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. The limit as of August 2013 is $150,162, but this will change each year based upon United States household income. According to the USPTO FAQ page, if there are multiple inventors, the inventors income is not added together, but instead each inventor/applicant must not exceed the income limit.
  1. Each applicant has not (a) assigned, granted, or conveyed a license or other ownership to another entity that is not a micro entity, and is not (b) under an obligation to assign, grant, or convey a license or other ownership to another entity that is not a micro entity.

Rule Set 2 (Higher Ed.):

  1. Each applicant qualifies as a USPTO-defined small entity under 37 C.F.R. 1.27.
  1. The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the application to an institution of higher education as defined in 20 U.S.C. 1001(a).

Under rule set 1 many will not qualify because of the income limits and rights transfer limitations. Rule set 2 applies to universities and their employees.

Under the current fee schedule, it will cost a small entity $730 (Basic fee $70 + utility search fee $300 + utility examination fee $360) to file a utility patent application without excess claims. In contrast, it will cost a micro entity $400 (basic fee $70 + utility search fee $150 + utility examination fee $150). A large entity will pay $1600 ($280 + $600 + $720) for the same filing.

Patent Rejection: Why did the USPTO reject my Patent Application?

After a patent application is filed, the application will be placed in a queue to be examined by a patent examiner at the patent office. The patent examiner’s job is to ensure that only patent applications that meet the legal requirements for patentability are allowed to become patents.

According to some estimates between about 77% to 95% of all patent applications receive at a least one type of rejection or objection during the first examination by a patent examiner. Therefore it is quite common to receive such a rejection or objection in a patent application. Many such objections or rejections can be overcome by a proper response as explained below.

I. Formalities

Before turning to substantive rejections, which consider whether the invention is new as compared to the prior art or whether the subject matter of your invention is patentable, first we will consider objections based on formality requirements.

Parts of A Utility Patent Application

Section 600 of the Manual of Patent Examining Procedure (MPEP) sets out the component requirements for a utility patent application. For the purpose of this article, we will focus on the specification, the drawings, and the claims. The MPEP provides that the specification should include the following sections in order:

  1. Title of the Invention.
  2. Cross-References to Related Applications.
  3. Statement Regarding Federally Sponsored Research or Development.
  4. The names of the parties to a joint research agreement.
  5. Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (See 37 CFR 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc must be specified.
  6. Background of the Invention.
    1. Field of the Invention.
    2. Description of the related art.
  7. Brief Summary of the Invention.
  8. Brief Description of the Several Views of the Drawings.
  9. Detailed Description of the Invention.
  10. Claim or Claims.
  11. Abstract of the Disclosure.
  12. “Sequence Listing,” if on paper.

Some of the above sections only apply to certain types of applications, but every application generally includes at least a title of the invention, a background of the invention, a brief description of the invention, a brief description of the drawings, a detailed description of the invention, a claim or claims, and an abstract. Therefore if any required section of the specification is not provided the examiner may raise an objection and require that the section be added or that a heading inserted so that all of the sections that are required are in the specification.

However no new subject matter can be added to the application after it is filed. Therefore, if, for example, the abstract is left out of the application at the time it was filed an abstract can probably be written an added based on subject matter disclosed in the rest of the description of the application. Therefore the subject matter of the abstract would not be new as compared to what was originally disclosed.

Features claimed but not shown in the drawings

In many cases in order for a feature to be claimed in a patent application it must be shown in the drawings. This is not always true for her example with respect to inventions that don’t require any drawings, such as certain chemical inventions. However, many if not most patent applications include one or more drawings that accompanied the description to help the reader understand the invention. See MPEP 608.02. If the invention is of the type that is capable of being shown in drawings then any claimed feature should also shown in the drawings.


A detailed discussion of how drawings should be drafted in order to comply with patent offices requirements is outside the scope of this article. However the rules at 37 CFR 1.84 set forth the standards for patent drawings. Further the USPTO created a Guide for Preparation of Patent Drawings dated June 2002 which is a good resource for resolving questions regarding patent drawings.


Every non-provisional application must include at least one claim. If the patent application does not have a claim the USPTO will not provide the applicant with a filing date. Claims are the most difficult and important portions of a patent application to draft properly. One of the most common objections raised with respect to claims is that a feature or element described in the claim lacks an antecedent basis, which is explained in MPEP section 2173.05(e).

A claim lacks an antecedent basis, for example, when a claim refers to ‘the lever’ or “said lever, where the claim contains no earlier recitation or limitation of a lever. Every element in a claim must be introduced starting with an “a”, such as “a lever”  and every reference to that lever thereafter is either in the form of “the lever”  or “said that lever.” Therefore you can’t recite “the lever” before you provide “a lever” earlier in the claim. if the claim does recite “the lever” before any reference in the claim is made to “a lever” the examiner may reject the claim on the basis that “the lever” lacks an antecedent basis of the claim. This is just one of the formalities that are required when drafting claims. Antecedent basis issues can almost always be remedied by an amendment to the claims that introduces the element in question with an “a” or “an”.

Above are just some of the formality issues that might cause the examiner to issue an objection of your application.

II. Substantive Rejections

Many of the above mentioned formality objections can be easily overcome as long as the application was drafted properly in the first case.  However dealing with substantive rejections can often be more challenging. A substantive rejection often includes an assertion by the examiner that the invention as described in the claims is not new as compared to the prior art.

There are a number of ways to overcome a rejection based on the prior art. These include amending the claims to include further limitations so that the claim language doesn’t overlap the prior art, making arguments that the examiner’s interpretation or understanding of the prior art is not correct, making arguments that the examiner has improperly combined two or more prior art references that cannot be combined under the circumstances. Other methods to overcome the office action which are less common can include proving, if the application was filed before the America Invents Act deadline, that you invented your invention before the reference date of the prior art and diligently pursued a prototype for filing a patent application.

Rejections based on novelty, i.e. that the claimed invention is not new in relation to the prior art, usually take one of two forms: a 35 USC 102 anticipation rejection, a 35 USC 103 obviousness rejection, or a 35 USC 101 ineligible subjectmatter rejection.

Section 102 Anticipation Rejection

In a section 102 anticipation rejection the examiner has to show that each and every element of the subjects claimed is found in one reference either explicitly or implicitly. So to overcome a 102 rejection the task is either to add additional limitations to your claim or to argue that the reference does not contain each and every element of your claim.

Section 103 Obviousness Rejection

In a section 103 obvious this rejection, the examiner could not find every element of your claim and one single reference instead the examiner uses two or more references combined to find every element of your invention. The examiner must put forth a basis as to why it would have been obvious to one skilled in the art related to your invention to have combined the references to meet all of the elements of claim. To overcome a 103 rejection limitations several approaches can be taken, including elements can be added to the claim which are not found in any of the references cited, arguments can be made that the references cannot be combined, an argument can be made that the references do not show all the elements as the examiner claims.

Section 101 Ineligible Subject Matter Rejection

in a section 101 rejection the examiner is asserting that one or more claims of the application are not directed to subject matter that can be patented. This often arises in cases involving computer based, biotech, and business method inventions. The scope of the types of inventions that can be protected is very broad under the U.S. Patent law. But there are some exceptions such as mathematical formulas, abstract ideas, and laws of nature. However it is possible to patent the application of a mathematical formula or abstract idea but not the mathematical formula or idea itself. If the patent application was drafted properly at the beginning it is often possible to overcome this rejection by incorporating appropriate elements into the claims or working with the wording of the claims to avoid claiming directly abstract ideas, mathematical formulas, or laws of nature.


While the above objections are not an exhaustive list, but comprise some of the common issues that arise during substantive examination of patent applications. Many of them can be overcome by the appropriate argument or amendment in a response depending in some cases one how the patent application was originally. A properly drafted application seeks to anticipate and provide support for any changes that might need to be made later during examination by the Patent Office.

Employer and Employee Invention Rights: Does My Employer Have Rights in My Invention?

Whether an employer has rights in an employee’s invention depends on the circumstances of the invention, the terms of any agreements between the employee and employer, and the state’s laws that cover the situation.

The first step is to review the terms of any agreements that the employee signed with the employer. This is because it is possible for an employee to transfer his or her rights in an invention to the employer through a written agreement. Titles to agreements that might contain relevant terms regarding invention ownership include “employment agreement”, “non-compete agreement” “non-disclosure agreement” “intellectual property agreement” “invention agreement” “employee invention agreement” etc. Not all documents with such titles necessarily contain provisions regarding invention ownership, however such documents, if they exist, should be reviewed in case they contain such provisions.

Regardless of the title of the agreement, we are looking for terms that transfer rights in invention to the employer in consideration for the employee employment compensation. Terms regarding invention ownership may explain the scope and extent to which the employer claims ownership over the employee’s inventions.

The terms of an agreement might provide that the employer owns inventions developed by the employee, even if the employee does it on his or her own time and with his or her own resources. However, typically ownership claims are limited to inventions that are related to the employer’s business or reasonably anticipated future business.

Some states have statutes that limit the types of inventions an employer can claim ownership in. For example, Illinois has an Employee Patent Act that prohibits an employer from claiming rights in an invention in which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee’s own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Therefore Illinois prohibits employers from claiming rights in inventions not developed with employer resources and unrelated to the employers business. However, not all states have such a statute. So if Illinois law does not apply to the employment agreement at issue, statutes of the applicable state law will need to be reviewed.

No Agreement
If there is no written agreement providing the employer owns certain inventions of the employee, then the result will depend on the circumstances of the employment and invention. If any employee was hired or directed to solve a particular problem or to exercise his or her inventive faculties, then it is likely the employer will own the resulting invention under an implied-in-fact assignment. However if the hiring or direction is not sufficiently specific and the employee was not hired or directed to make improvements in a designated area, the employer may not own the resulting invention. There is a fine line between hire-to-invent and general employment, which is very circumstance dependent.

Shop rights
In the instance where the employer does not own the invention, but where the employee uses the employer’s resources to conceive, develop, or to reduce an invention to practice, the employee may have “shop rights” in the invention. Shop rights provide the employer with a nonexclusive, royalty-free, nontransferable license to make use of the invention.

It is important for employers to have written agreement that define which employee inventions that the employer will own. To determine whether an employer will own a particular invention, the applicable employment agreements, the circumstances of invention, and the applicable law should be reviewed.

Options When Your Invention Is Stolen

If you disclosed your invention to someone and that person subsequently copied your invention and or filed a patent application on the invention, you may have options to take action depending on the circumstances. Several scenarios are explained below.

By an non-inventor employee
If your employee, who is not an inventor, is commercializing or has sought patent protection, you will want to review the documents that were executed when the employee was hired. Such documents could include non-disclosure or non-compete provisions.

The misappropriation of the invention could constitute a breach of the non-disclosure provisions and or could constitute trade secret misappropriation if the product/service at issue was not publicly available, or if publically available, if the employee had access and utilized non-public information about the products/services. The misappropriation could also violate a non-compete provision depending on its terms. Further, the misappropriation could violate the employee’s duty of loyalty to his/her employer.

By an inventor employee
Many of the claims explained above regarding the non-inventor employee may exist against a inventor employee depending on whether the employer has any rights in the invention.

To determine whether the employer has any rights in an invention, first any signed agreements between the employee and employer should be reviewed. Language pertaining to employee ownership of employee’s inventions should be reviewed if such language exists.

If no signed agreements exist a number of factors may be considered to determine whether the employer has any rights in the invention such as: (1) was the employee employed to invent, (2) did the employee work on the invention at the direction of the employer, (3) did the employee work on the invention during work hours, (4) did the employee work on the invention using employer equipment, and (5) was the invention related to the employee’s business or reasonably anticipated business or research?

Further state statutes might exist that impact what rights an employer can claim in an invention. For example, Illinois has a statute that limits an employer’s ability to own inventions made by the employee on his or her own time without any of the employer’s equipment, supplies, or facilities when the invention is not related to the employer’s business or the employer’s actual or demonstrably anticipated research or development.

By a non-employee co-inventor
If there are two or more non-employee inventors, under patent law, each inventor will own the patent jointly with the other inventors. This allows each inventor to make, market, sell, license, or otherwise grant rights in the patent and receive moneys therefrom without splitting the funds with the other inventors. Further, each inventor does not need to get permission from the other inventors to undertake such activities with respect to the patent.

Therefore it is important to account for the possibility that co-inventors might fall into a dispute about the patent, a patent application, or the commercialization of a patent pending product/service. Whenever there is more than one inventor it is best to form a legal entity in which the inventors own an interest (e.g. own shares). The ownership of the invention can be transferred to the legal entity by all inventors. The internal operating documents of the entity can describe (1) the ownership interest of each inventor (and other non-inventors, if desired), (2) how the invention will be commercially exploited, (3) how disputes are resolved between inventors, (4) what happens if one or more inventors wants to proceed but other inventors do not, and (5) many other business considerations. The legal entity formed can be a written partnership, a corporation, an LLC, or other entity.

If the rights in the invention were assigned to an entity, then action may be taken based on the rights held by the entity.

By a someone under an NDA
Prior to marketing or publicizing an invention, it is often necessary for an inventor or company to work with others to develop the product or to take other necessary marketing and business actions for launching the product. Often a nondisclosure agreement (NDA) is used between the inventor/company and the third parties prior to product/service launch.

If the invention was misappropriated by a person or entity to which the invention was disclosed under a NDA, then the NDA should be consulted for determination of rights you may have.

Some possible basis for taking action are explain above depending on the circumstances. If your invention has been misappropriated, you likely have options for taking action and recovering rights in the invention. If there is a basis for taking action, the first set may be to send a letter to the misappropriator. However, in some circumstances the first step will be be to file a lawsuit or take action at the USPTO. Seek advice of an attorney regarding the options you may have under your particular circumstances.