Почему вам нужен американский патент?

Мы знаем, что многие наши читатели в своей «прошлой» жизни были инженерами, имели ряд изобретений и патентов. Иммиграция многое изменила. Нет, голова продолжает работать, люди придумывают, изобретают, но не знают, что делать с этим дальше.  С одной стороны, патентование стоит денег.  С другой стороны, патенты могут быть хорошей, нетривиальной инвестицией с огромным потенциалом.  Их можно продать на аукционе.  По поводу патентования  вы можете поговорить с адвокатом  Борисом Танкилевичем по тел. (925) 930-0966.

Applying for US Patent protection for your invention – basic terminology and what to expect?

1. What is a US Patent?

A US patent is a contract between US Government and an inventor that in exchange for the full disclosure by the inventor the US Government gives the inventor an exclusive right to prevent anybody else from making, using or selling any product based on the invention for which the US Patent was granted. The inventor himself does not have an affirmative duty to practice his invention.

 

2. Why anybody would need to obtain a US Patent?

A US Patent allows an inventor to do at least the following: (A) to protect his invention in the US market; (B) to license his invention for a fee; (C) to take a potential infringer (the one who without paying the licensing fees is selling, using, or making any product based on the invention that is protected by the US Patent) to Court and to obtain the patent damages; (D) to obtain an investment money for a company that is based on the invention in question; and (E) to sell a US Patent on an auction.

 

3. The issue of patentability

Not any invention can be patented. To patent an invention an inventor has to demonstrate that his invention has at least the following minimum qualities:

A. utility– – it means that the invention has to provide some tangible benefits for a person/company practicing this invention.

B. novelty– – it means that there is no prior art that anticipates the invention. The prior art is understood to be a single publication (a scientific paper, a book, a patent, a presentation at the conference, or a published patent application anywhere in the world).

C. non-obviousness– an invention has to be unobvious- it means that there no combination of at least two publications anticipates the invention, wherein a term publication is defined in the sub item B.

 

4. Main parts of an application for a US patent

A. at least one claim -that claims the invented subject matter;

B. a specification -that describes how to practice the invention;

And

C. at least one drawing –whereas this drawing is provided to help in understanding the specification.

 

5. Filing of a US patent application and what to expect after filing?

A. Prior Acts of the inventor that could be used by an opposing party to invalidate a patent even if a patent for an invention is granted:
(i) No device, or any other tangible material, or program made based on this invention could be sold before an application is filed.

(ii) No paper, including an oral presentation on any conference, on the subject matter of the invention could be published before an application is filed.

B. an application should be filed electronically, otherwise there will be an additional substantial filing fee.

C. a filed US application is assigned a serial (application) number and a filing date; and acknowledgment receipt will be provided to an applicant.

D. a filed US application will be assigned to an arbitrary Examiner for examination –including the procedural issues, and the substantive examination on the merits.

E. The average time before an Examiner will consider the case is about 18 months- 24 months.

F. The Examiner’s initial response (called an Office Action) will be rejection if an application is well drafted. Indeed, a well drafted case will include a subject matter that exceeds the invented subject matter to leave a space for further negotiations with the Examiner.

G. The next step is to answer to the Examiner’s rejections and objections  in order to have at least some claims allowed. If there is no response  the application will go abandoned.

H. Usually an applicant has only one short to answer to the Examiner.

The second Office action in most  cases is fatal.

 

6. Patent grant

A. If an applicant is successful, the US Patent Office will grant a US Patent Letters Grant.

B. Valid for 20 years –since the filing date.

C. The US Patent Letters Grant is valid  only on the territories under the US  jurisdiction.

D. To obtain a worldwide patent protection, an applicant has 12 months after the US  filing date to file a Patent Cooperation Treaty (PCT) application.

E. The filed PCT case allows an applicant to pursue a filing in any foreign jurisdiction  that is a party to PCT treaty ( any country excluding Egypt, Taiwan and Malaysia)  within 18 months after filing a PCT case.

 

7. Exit strategies: Patent Brokerages and IP liquidity

There are companies that can sell your patent on an auction.

For example, since April 2006, ICAP Patent Brokerage, and its predecessor organization, Ocean Tomo Transactions, has held 13 live auctions across the United States and Europe resulting in the successful transaction of over $170 million in IP, benefiting sellers such as individual inventors, small and mid-sized companies, large corporations, federal and government agencies, academic institutions, and investors. The Auction platform creates a center for IP liquidity and promotes transparency for a market in which none had historically existed.