How can I identify potential intellectual property assets in my business?
To do that you must "dissect" and examine all aspects of your business processes, products and services from a number of different perspectives, to determine the specific aspects that:
· differentiate your business from your competitors?
· attract customers to you instead of the competition?
· give you a competitive advantage?
· others would pay to be able to use?
See IP Tools, Intellectual Property Self-Audit Checklist.
Go to top.

If I have a competitive advantage, how do I keep my competitors from just copying me and taking away my advantage?
To retain your competitive advantage, you must build an "intellectual property fort" around the aspect of your product or business that gives you the competitive advantage. The primary building blocks for that "fort" are the legal protection mechanisms: Utility Patents, Design Patents, Copyrights, Trade Secrets, Trademarks, and Mask Work Protection. Each of the legal protection mechanisms is designed to protect different aspects of intellectual property. You should consult an attorney specializing in intellectual property (preferably a patent attorney) to develop a protection strategy using each of the protection mechanisms to its best advantage.See Protecting Your #1 Asset, Introduction, pages xxviii and pages 15-16 and 245.
Go to top.

What is the difference between patents, copyrights, trademarks, and so on?
They are different forms of protection, and intended to protect different types of intellectual property:
· Trade secret protection involves keeping technology and business information secret to prevent your competition from copying the technology information. This type of protection is typically implemented by restricting access to the information or technology, and using appropriate agreements to create obligations of confidentiality.
· Patent protection is intended to protect utilitarian aspects (e.g., function, tangible results, cooperating structure) embodied in a product, process or service.
· Design patent protection is intended to protect the non-utilitarian aspects (ornamental, nonfunctional) - appearance of a product.
· Copyright protection is available for works of authorship - the expression of an idea (as opposed to the idea itself).
· "Mask work" protection is intended to protect lay-outs embodied in semiconductor chips (masks) and prevents others from reproducing, importing, or distributing chips embodying the work.
· Trademark/Service Mark/Trade Dress protection intended to protect against your competition trading on your reputation by copying distinctive aspects that consumers associate with your business.
See Protecting Your #1 Asset, Introduction, pages xxviii and pages 15-16 and 245..
Go to top.

What is a "patent"?
A patent is the grant by a sovereign government of some privilege or authority. For example, in the United States patents can be obtained on inventions (utility patent), designs (design patent), and plants (plant patent). In the United States, a patent can be thought of as an agreement between the inventor and the government. The inventor teaches the public, in enough detail to enable a person "of ordinary skill" in the field of the invention (the average engineer, technician, scientist, or worker in the particular area of technology of the invention), how to make and use the invention without undue experimentation. In return, the inventor is given the right to exclude the public from making, using, importing, offering for sale, or selling the invention for a period of up to 20 years from the date that the application for patent is filed. See Protecting Your #1 Asset, pages 12, 50-51.
Go to top.

What are the advantages of patent protection?
· Patents are the only protection against independent development by others.
· If properly drafted, a utility patent can protect the central concept-- the functionality --of an invention.
· Patents can be used to offset basic patents held by others.
· A patent is evidence of expertise -- a demonstrative asset.
· Patents can be a source of income to the company -- an alternative to raising capital.
See Protecting Your #1 Asset, page 96.
Go to top.

What types of things are patentable subject matter?
Anything that is within broad statutory categories of patentable subject matter -- characterized by the Supreme Court as covering "anything under the sun made by man." This clearly includes such things as software, methods of doing business and genetically altered lifeforms. A patent can be obtained on any patentable subject matter that is "Novel" (not subject to a "statutory bar") and "Not Obvious". See Protecting Your #1 Asset., pages 51-52 and 54-60.
Go to top.

What are the requirements for patentability?
Threshold criteria must be met before an inventor is awarded exclusivity to an invention. The inventor must actually add something new and useful to the public knowledge (and observe the spirit of the patent law). To be patentable, an invention must be: within broad statutory categories of patentable subject matter ("anything under the sun made by man."); "Novel" (not subject to a "statutory bar"); and "Not Obvious". Under the novelty and nonobviousness sections of the law, a claimed invention is not patentable if the "prior art" fully anticipates (includes each and every element of) the invention or it would have been obvious, (to the average person working in the relevant fields) to modify or combine the "prior art" to anticipate the invention.
An invention is considered novel unless specific circumstances (referred to as "statutory bars") have occurred. The statutory bars, in effect, prevent obtaining a patent on something already owned by another or in the public domain, and prevent the extension of patent rights beyond the term of the patent. Generally, when a "statutory bar" occurs, the subject matter of the "statutory bar " becomes "prior art" against which the patentability of an invention is measured. In essence, prior art with respect to invention claimed in a patent includes: (a) things that were (i) commercialized by the applicant for the applicant's business, or (ii) ascertainable from publicly available information more than one year before the application for patent was filed; and things that either (i) the inventor knew, or (ii) were ascertainable from publicly available information, or (iii) invented by someone else (and not maintained as a trade secret) before the invention was made. See Protecting Your #1 Asset., pages 54 and 60.
Go to top.

Can I lose the ability to obtain a patent by premature disclosure or commercialization of the invention?
Yes. The applicable patent law defines certain circumstances which bar obtaining patent protection. These circumstances vary from country to country. See Protecting Your #1 Asset., page 63.
Go to top.

How can I tell if my invention is non-obvious?
As a practical matter, if one or more aspects or elements of an invention are not disclosed in prior patents or publications, or if the invention combines known elements, but no prior patent or publication expressly or impliedly suggests combining those specific elements, the invention is probably NOT obvious. See Protecting Your #1 Asset., pages 77-78.
Go to top.

Can I patent an idea?
You cannot obtain a patent on an abstract idea, per se. However, if otherwise patentable, you can obtain patent protection covering embodiments and implementations of the idea, so long as you can provide a description with enough detail that a person "of ordinary skill" in the relevant technical field can actually embody or implement the idea and produce a tangible result. The breadth of the patent protection is a function of prior art against which patentability is measured, and the skill with which the patent is drafted. Prior art permitting, and with proper foundation for equivalency laid in the patent, coverage of all practicable embodiments and implementations of the idea is feasible. See Protecting Your #1 Asset, pages 54-60.
Go to top.

Can I patent software?
Yes -- if it produces a tangible result, and is novel and not obvious. See Protecting Your #1 Asset., pages 54-59.
Go to top.

Can I patent a method of doing business?
Yes -- if it produces a tangible result, and is novel and not obvious. See Protecting Your #1 Asset, pages 54-60.
Go to top.

Do I have to actually build a model of an invention before I can file a patent application?
No. You only need to be able to provide a description of the invention in enough detail that a person "of ordinary skill" in the field of the invention (the average engineer, technician, scientist, or worker in the particular area of technology of the invention) can make and use the invention. The specific embodiment (example) of the invention that you describe need not be efficient or cost-effective; it is only required to work for its intended purpose. There are, however, rules against holding back (failing to disclose) certain types of information (best mode) if you have it. See Protecting Your #1 Asset, pages 84-85.
Go to top.

What information do I need to include in a patent application?
A patent application is, in effect, a proposed patent, submitted to the PTO for its approval. Ignoring issues of the format, a regular application for a patent must include a written description of the invention, a drawing (where necessary for understanding of the invention), and with respect to make your applications, at least one claim, and an oath or declaration by the applicant and fee payment (although the oath can be filed and fees paid after the fact).
The patent application, however, is not merely filling out a form. The written description is a technical specification with sufficient detail to enable the "average" person practicing in the relevant technical field to make and use the invention, and must describe the "best mode" (best version) contemplated by the inventor. Because of the "best mode" requirement, the level of detail required in the patent application is a function of the state of development of the invention at the time the application is filed. The point that the application is filed during the development cycle of an invention can therefore be part of a comprehensive protection strategy. See IP Tools, Disclosure Form; See Protecting Your #1 Asset, pages 79-80 and 83-87.
Go to top.

What is a provisional patent application?
A provisional application is a mechanism that in effect shifts the effective term of patent protection. The term of a patent is tied to the actual filing date of the application (the date that the application is actually filed with the PTO). However, the effective filing date of an application is used to determine whether or not certain items are prior art against which patentability is measured. Filing a provisional application (then claiming the benefit of the provisional application) can establish the effective filing date of a later filed regular application for the purpose of defining prior art. However, the pendency of the provisional application is not included in the calculation of the term of the patent issuing from the application. This in effect shifts the effective term of US patent protection in time by up to one year. However, time periods in which foreign applications must be filed are measured from the date of the provisional application. Under the statute, the requirements for a "provisional application" are the same as that for a regular application except that the provisional application does not require a claim or declaration. See Protecting Your #1 Asset, pages 81-83.
Go to top.

Is there such a thing as a provisional patent?
No. A provisional application is not examined and is automatically abandoned 12 months after filing. It does not itself ever mature into a patent. For a patent to issue on the subject matter described in the provisional, a regular application claiming priority on the provisional application must be filed within a year of the provisional. See Protecting Your #1 Asset, pages 81-82.
Go to top.

Can I save money by filing a provisional application?
Typically, NO. While filing a provisional application can delay certain expenses, it does not avoid any expenses, unless the provisional application is abandoned before a regular application is filed, i.e., pursuit of patent protection is abandoned. Since provisional applications are not examined, considerably more latitude is taken with respect to the format of provisional applications as compared to non-provisional regular applications, e.g., in an emergency (e.g., a statutory bar sneaks up on you and your attorney) an "information dump" can be filed as a provisional application. However, the written description requirements for a provisional application are exactly the same as that for a regular application. In order to be effective, the provisional application requires the same level of detail with respect to an invention as in a regular non-provisional application. In addition, for a patent to issue on the subject matter described in the provisional, a regular application must still be filed. See Protecting Your #1 Asset, pages 81-83.
Go to top.

How much does preparing a patent application cost?
The cost of preparing a patent application is a function of two primary factors:
· The complexity of the invention (from both technological and legal perspectives); and
· The sufficiency, organization and format of the materials and information provided to the patent attorney to work from.
In general, the cost of preparing an application on an invention of average complexity typically runs somewhere between $7,500 and $15,000. Inventions of higher than average technological or legal complexity or where the patent attorney has to "dig" for information tend to be more expensive. Use of a good disclosure form can ensure that the appropriate information is provided to the attorney, in a form that can readily be used to prepare an application, and can provide for significant reductions in cost.
While attorneys can be found that will prepare applications at a lower cost, care should be taken that protection is not sacrificed for the sake of economy. Preparation of a patent application should be an interactive process. See Protecting Your #1 Asset, Introduction page xxviii. See IP Tools, Intellectual Property Tools, Disclosure Form.
Go to top.

If an invention has passed into public domain does this mean that one cannot get a patent on improvements made to the invention.
No - improvements can be patentable - if novel & unobvious. See Protecting Your #1 Asset, pages 60-61 and 81.
Go to top.

What is a Trademark?
A trademark (or service mark) is a word, or symbol (or anything that is non-functional) used to distinguish goods (or services) of one company from those of another. See Protecting Your #1 Asset, pages 13 and 125-126.
Go to top.

What is Trade Dress?
Trade dress is the appearance and packaging of a product. Where trade dress is sufficiently distinctive, it can become a trademark. See Protecting Your #1 Asset, page 14.
Go to top.

What is a service mark?
A service mark distinguishes the services of one company from those of another. See Protecting Your #1 Asset, pages 125-127.
Go to top.

What is the difference between a service mark and a trademark?
Technically, a trademark distinguishes the goods (products) of one company from those of another, while a service mark distinguishes the services of one company from those of another. In other words, a service mark is, in effect, a trademark used in connection with services. In practice, the term trademark is often used generically to refer to both trademarks and service marks. The law applicable to trademarks and service marks is essentially the same, except that it is somewhat more liberal with respect to what constitutes a "use" of a service mark. See Protecting Your #1 Asset, pages 126-127.
Go to top.

I have seen advertisements for "Invention Development" Companies offering to assist inventors obtain patents and/or market their inventions. Should I use one?
Probably not. Invention Development Companies are not registered with the patent and trademark office. While there may be such companies that are honest and deliver valuable service, I have never encountered one. Before engaging any such company, I strongly suggest consulting with a reputable patent attorney.
Go to top.

What do I need to do before approaching a company with an idea?
Ideally, before disclosing your idea you should have:
· A signed, dated, and witnessed written record of your idea, describing the idea in as much detail as possible; and
· A signed written nondisclosure agreement that specifies your rights and obligations and those of the company.
As a practical matter, however, for a variety of reasons (many of which are legitimate), many companies are not receptive to unsolicited disclosures of ideas, and not only will refuse to sign a nondisclosure agreement, but before considering your idea will insist upon you signing a "Non-Confidentiality" agreement (to the effect that there is no special relationship, no confidential information will be exchanged, and that anything not covered by a patent is fair game). This being the case, it is prudent to pursue patent protection prior to approaching a company with your idea. See IP Tools, sample nondisclosure agreements; See Protecting Your #1 Asset, pages 187-190, 213 and 231-234.
Go to top.

Do I need to do a patent search before filing an application?
A patent search is not a prerequisite to filing a patent application. However, it is strongly recommended. You may be able to perform a preliminary search yourself. See Protecting Your #1 Asset, pages 88, 183-184 and 200-201.
Go to top.

What is a trade secret?
Essentially anything that gives you a competitive advantage by virtue of not being known by (being kept secret from) your competitors. See Protecting Your #1 Asset, pages 15 and 39-40.
Go to top.

What types of things can be a trade secret?
Essentially anything that you can successfully keep secret, recognizing that anything that is ascertainable from publicly available information (e.g. can be reversed engineered from a product on the market, or determined from marketing materials) cannot be kept secret. See Protecting Your #1 Asset, pages 39-41 and 155-156.
Go to top.

How can I keep something as a trade secret when I have to disclose it to someone else?
Through the use of an appropriate nondisclosure agreement. See IP Tools, sample nondisclosure agreements; See Protecting Your #1 Asset, pages 41-43, 183-184 and 231-234.
Go to top.

If I pay to have software developed, will I own the rights to the software?
Not necessarily. In the absence of a written agreement, probably not. See IP Tools, sample assignment agreements; See Protecting Your #1 Asset, pages 96, 121-123, 208-209 and 232-233.
Go to top.

If an employee invents something related to the company business, will the company have rights to the invention?
Not necessarily. Most companies require their employees to enter into agreements assigning ownership of employee inventions to the Company. However, in the absence of a written agreement, it depends upon the employee's position and duties with the company, and the circumstances under which the invention was made. See IP Tools, Intellectual Property Tools, sample employee agreement; See Protecting Your #1 Asset, pages_96-97, 209, 229-230.
Go to top.

How much does preparing a trademark application cost?
Typically the attorney's fees are considerably less than $1,000. However, that figure ignores the cost of any pre-filing investigation (recommended) and any government filing fees paid to the US Patent and Trademark Office which at the time of this writing are $325.00 for each classification of goods and services to which the registration will apply. Additional fees can be incurred over the course of the next eighteen months or so in connection with the prosecution of the application before the USPTO. The amount of those fees is determined by the positions taken by the USPTO and the response to those positions typically run anywhere from $0 to $2000.
Go to top.

Should I do an investigation (trademark search) before filing a trademark application?
You should perform a search of federal trademark registrations. You are deemed to have constructive knowledge of federal registrations in any event. See Protecting Your #1 Asset, pages 130-131. If you are in the process of choosing the mark, before you spend a lot of money building goodwill, you should probably have a comprehensive search covering common-law usage performed. The comprehensive search is performed by a specialized professional search firm; typically engaged by your attorney. However, if you are already committed to a particular mark, there are situations when you are actually better off not being aware of common-law uses of the trademark by third parties, and may not want to do a comprehensive search. See Protecting Your #1 Asset, pages 134-135.
Go to top.

How much does a trademark search cost?
You can perform a preliminary trademark search yourself using trademark databases of federal registrations and applications for registrations made available to the public for free by the USPTO. However, in some instances, you may need an attorney to interpret the results of the search. In other cases, where a more detailed search is advisable, an outside firm may be hired to conduct a more comprehensive trademark search before filing. A comprehensive trademark search typically costs from $600 to $1,000. Here again, there may be additional attorney's fees (typically a few hundred dollars) for the time involved in analyzing and reporting the search results.
Go to top.