What Does Patent Pending Mean & Can You Protect Inventions With It?

The term “patent pending” is a legal designation or expression used to describe the interim between a patent application being filed with the United States Patent & Trademark Office (USPTO), and the patent being issued by the USPTO or the application abandoned.

The terms “patent pending” and “patent applied for” are permitted to be used by the inventor so long as a patent application has actually been filed with the USPTO. The patent applicant may then legally mark their invention with the term “patent pending” for the duration that they hold a non-expired provisional application or a pending non-provisional application. So you may be asking yourself, what is the difference between the two, and does it matter?

What is a Provisional Patent?

A provisional application is a legal document filed in the USPTO that establishes an early filing date, but will not mature into an issued patent unless a regular non-provisional patent application is submitted within one year.  A non-provisional application is simply a US patent application that is not a provisional-application (it’s helpful to consider that the term arose to distinguish what were considered  “normal” patents from newly-established provisional ones in 1995). Important notes of distinction between the two types of applications include: the provisional application does not require any claims to be submitted for examination, while the non-provisional application must contain at least one. Additionally, a non-provisional application has the benefit of being able to claim priority to a prior filed application, while the provisional application may not. Either type of application may be rejected by USPTO examiners if they fail to meet the requirements of inventive & non-obvious.

An inventor pursuing protection for their intellectual property may choose to dissuade copy-cats by marking their work with “patent pending”. The purpose of marking “patent pending” is to notify the public, businesses, or potential infringers that they may be liable to damages (more below) if they choose to copy your invention. Such declarations are important when considering that the large backlog of cases at the USPTO may mean your invention will remain in “patent pending” status for several years. It is wise to note that these phrases have no legal standing or effect, but serve only to notify interested parties that an application for a patent has been filed with the USPTO. Protections afforded by a patent do not begin until the patent has been officially granted.

Patent Pending Doesn’t Give You as Many Rights as You Might Have Heard

If declaring “patent pending” fails to provide any legal protection, then you may be wondering what kind of protections you are left with. Luckily, the term still carries weight, as there is a section of the law that provides the patent applicant may receive royalties from copiers or infringes for sales of products and services protected by a resultant patent, known as provisional rights (covered under 35 U.S.C.A.).  It should be noted that the provisional rights come with some caveats that may leave the inventor vulnerable:

1. First, damages do not begin to accrue until the patent publication date, as opposed to the filing date, meaning provisional rights do not cover back-royalties.
2. Second, the copier must have notice of your patent application, meaning they must receive a copy or have otherwise read it. While this may be difficult to prove, you may receive triple damages if it can be shown the infringement was willful.
3. Last, and perhaps thorniest of the caveats to navigate when trying to claim provisional rights- the claims in your patent must be substantially identical when the patent application is granted as to what they were when the application was published. This often proves difficult because it is common that changes will be made to the claims covered within the scope of the patent during the prosecution stage, when your patent attorney may have to negotiate with the assigned USPTO examiner.

Due to this commonality, recovery of royalties under the provisional rights section poses a challenge. Apart from provisional rights, it may still be possible to make additional intellectual property claims such as: breach of contract, copyright infringement, trade dress infringement, trade secret misappropriation, or other infringement.

Claiming “patent pending” may also serve in carrying hypothetical weight. Despite difficulty in obtaining provisional rights, you may choose to take a proactive stance in deterring copiers by sending them a Notice letter containing your published patent application. Your letter may range from asking them to cease or to meeting for a licensing discussion.  Potential infringers may deem it too risky an investment to copy your intellectual property if the start up costs are high and they think you will be successful in obtaining a patent. Comparatively, they may choose to ignore your letter, as they are not legally obligated to respond, if they conclude you will not be issued a patent, or that their product will not be covered under your patent. There is an additional risk that the copier may choose to design around your patent application after receiving notice, if they feel they can produce something meeting USPTO’s inventive and non-obvious standards.

Once a potential infringer has been notified, you may decide to request that the USPTO accelerate your application’s consideration (current USPTO wait time statistics here), as the USPTO is able to offer prioritized patent examination (also known as TrackOne) under specific circumstances. In some cases however, it may be advantageous to allow a copying competitor to build a market that you are then able to obtain through licensing fees once the patent is granted.

After your patent is granted, it will be protected from infringement under Title 35 of the United States Code so long as it is marked. Patent protection will, “…exclude others from making, using, selling, offering for sale, importing, inducing others to infringe, and/or offering a product specially adapted for practice of the patent.”(35 U.S.C.A. § 154(a)(2)).

The post What Does Patent Pending Mean & Can You Protect Inventions With It? appeared first on Amir Adibi Patent Lawyer.

source https://www.patentlawyer.io/what-is-patent-pending/

Patent Agent VS Patent Attorney

A dilemma that often arises amongst entrepreneurs, inventors, and the intellectual property field in general is whether one should seek out a patent agent or a patent attorney.

Understandably, many often wonder whether there is even a substantial difference between the two, but knowing the strengths and weaknesses of each and how to effectively utilize them can save you a crucial amount of time, money, and emotional exhaustion in both the long and short term. As rewarding as it is, the process of filing a patent is already a time and money consuming endeavor, so our goal here is to save you both. Let’s start with the basics.

 

How quickly will this go to market?

Depending on how soon you want your idea to get to market, you may not necessarily need to pursue a patent. The patent process can take up to four years depending on the scale of the idea, and in many cases, timing is key. If this is your scenario and you need your idea to hit market fast, you may want to start by just getting it licensed with a provisional patent application. Your idea will still be protected and you can also save time and money getting it to market while you pursue a patent in the long term.

On the other hand, larger scale ideas are going to require more capital and patience to protect and in these scenarios, you’re going to want to go with the pros.

 

So what’s the difference?

For the most part, they’re pretty similar:

Both patent agents and patent attorneys are licensed and authorized to deal with any and all matters concerning the writing and filing of a patent with the United States Patent and Trademark Office (USPTO); so in most routine cases, it doesn’t make a significant difference whether you hire an attorney or an agent.

However, it certainly becomes important if and when you require any legal advice, counsel, or representation regarding your patent. Only patent attorneys have this authorization. Patent agents are not able to practice or advise on law (i.e. non-disclosure agreements, infringement, trademarks, etc.).

Lets dig a little deeper into their qualifications and skills:

 

Patent Agents:

 

-Patent agents have a technical background or degree and must pass the Patent Bar exam through the USPTO, after which they are then registered and are authorized to write, file, and execute patent applications for individuals or clients. They can also perform patent searches to assess whether an idea is patentable or not. (*Note: You can and should always check an agent’s registration status here: https://oedci.uspto.gov/OEDCI/)

 

-Patent agents tend to have greater knowledge and more of a background in technical subjects such as the sciences and engineering, and are more familiar with ideas and inventions related to these fields. Many law firms and legal departments will often employ patent agents for their extensive knowledge in these areas.

 

-Patent agents are only allowed to practice “patent law” through or with the USPTO, but they are NOT lawyers and cannot provide legal counsel, especially if it relates to licenses or infringements on patents that are already licensed, nor can they represent you in court.

 

-Patent Agents are usually more affordable and often charge approximately 20-40% less than Attorneys for their services depending on experience and background.

 

Patent Attorneys:

 

-Patent Attorneys have law backgrounds and degrees and must pass both the state bar and the Patent Bar exams, at which point they are registered with the USPTO and are authorized to write, file, and execute patent applications and perform patent searches. They are also able to advise individuals regarding contracts.

 

-Patent attorneys are the only ones authorized to draft contracts, documents, and agreements, (such as non-disclosures etc.) and provide legal opinions and advice.  Only attorneys licensed in a particular state can represent you in court.

 

Is one a better option than the other?

Not necessarily- you wont always want to go with an agent and you wont always want to go with an attorney either. In most cases, it takes a number of years for patent agents to reach an ideal level of proficiency. And while agents with less experience might save you money in the short term, a poorly written patent application might still need to be rewritten and fixed by an attorney later on.

On the other hand, good agents can be quite capable and effective! A good number of patent lawyers will, in fact, hire patent agents to do the actual drafting of the patents due to their familiarity with specific technical principles that a lot of science or engineering patents deal with. According to patent attorney and inventor, David Kali, “They do more of the difficult work of drafting patents… they’re really the workhorses of this industry. They’re behind the scenes making lawyers look good. They really know their stuff and they’re great at what they do!”

The only drawback for agents is the fact that they cannot provide advice concerning general law practice; as such, they are unable to help you develop a working strategy regarding the nuances of intellectual property.

 

So how do you choose what’s best for you?

Given the subtle differences between patent agents and attorneys and how they function, it can be tough for the average person to figure out which way to go and who they will get the best services from if you aren’t already well versed in patents and patent claims. There are, however, certain things that you can keep an eye out for when reviewing your options for practitioners and selecting the best one for your purposes:

 

-Your Needs: What is it that you need from a practitioner? Do you see yourself needing legal counsel or representation? Or do you just need a patent application written and filed? Will you immediately require both?

-Qualifications: Is the practitioner registered with the USPTO? (https://oedci.uspto.gov/OEDCI/) Where were they trained? Are they or any groups they are a part of certified?

-Background & Experience: What subjects or fields do they have a background in? Is their specialty in an area that relates to your idea or invention? How long has the agent or attorney been practicing?

-Portfolio & Referrals: Can they provide a list of patents or applications they have previously written? Are there any reviews or referrals available of the practitioner or their company/ group online?

-Price: As mentioned before, attorneys tend to charge more for their services than agents, but depending on your needs and their experience, it can be worth it. Be sure to compare quotes and explore as different attorneys and agents can sometimes have different pricing models depending on their focus.

When considering attorneys, be sure to look at the breadth and variety of their work and experience. Do not consider attorneys whose only experience is with patent law as it is better to work with those who have experience in a range of law subjects. Those with experience in prosecuting patent infringement cases, litigating intellectual property concerns, and drafting trademark paperwork are strong candidates.

Most importantly, regardless of who you decide to work with, make sure it is someone that understands what you want to accomplish from the beginning and who is willing to help you understand what you need to do in order to get there. The size and scope of your idea is going to affect the amount of time and money you will need to put into the endeavor.

 

At the end of the day, both patent agents and attorneys are valuable tools that can help you protect and maximize your ideas and inventions. And like any other tool, the most important factor in their relative value is how and when they are applied. They each have their own strengths and often work together to produce patents and applications, with agents doing the initial drafts and attorneys refining and polishing it afterwards. You might be in a situation where you will need both at some point or you may only end up needing to work with an agent. Either way, one of the most important questions you will have to answer when the time comes is: Does this practitioner have the appropriate disposition for what I want? Will they be able to work with both you and the patent examiner reviewing your application to effectively address your concerns and the examiners objections?

Your ideas and inventions are like your offspring; you nurture and care for them and hope to raise them well enough so that one day they can go out and make their own way in the world. Patent agents and attorneys can help prepare them for this and ensure that they are protected in many ways, but you should still be careful, thorough, and well informed in how you go about selecting the right practitioner/s to supervise them.

The post Patent Agent VS Patent Attorney appeared first on Amir Adibi Patent Lawyer.

source https://www.patentlawyer.io/patent-agent-vs-patent-attorney/