Don't Let Your Patent Sink With the Inventorship!

Determining and claiming proper inventorship in a patent application is an important consideration that must not be overlooked. Oftentimes, persons such as the CEO of a company or a project manager are named as inventors in a patent application, even though they did not actually contribute to the invention. Improperly naming an inventor can lead to problems down the line, including patent invalidity.

"Determining and claiming proper inventorship in a patent application is an important consideration that must not be overlooked"

So, is there a test to determine proper inventorship? A simple example may be helpful here. Assume that an inventor is an avid golfer and invents a golf club with a new and novel golf club head design. The inventor takes the specification for making his golf club to a machinist, who based on the specification makes a prototype golf club for the inventor. The machinist is not a co-inventor. Similarly, a software programmer who merely generates software based on an inventor's specification is not a co-inventor.

"a software programmer who merely generates software based on an inventor's specification is not a co-inventor"

Now, let's assume that the machinist in the first example is also an avid golfer and suggests adding additional new and novel features to the golf club head that provide for improved ball flight. In such a situation, the machinist's contribution is not insignificant when measured against the invention as a whole. Furthermore, the inventor includes and claims (i.e., defines the scope of protection being sought) the new and novel features in his patent application. Guess what? Now the machinist is a co-inventor. The same applies to the second example provided above: The software programmer becomes a co-inventor, if he suggests new and novel features for the software program which are disclosed and claimed in the resulting patent application.

"The software programmer becomes a co-inventor, if he suggests new and novel features for the software program which are disclosed and claimed in the resulting patent application"

In addition, inventorship is determined based on the claims of a patent application. Accordingly, if claims are cancelled or added, the inventorship may have to be revised to reflect the pending claims. However, patents typically do not get processed until several years after their filing, making inventorship determination difficult after the fact. In this respect, keeping a lab notebook detailing the contributions made by each inventor during the invention development may be helpful for determining proper inventorship down the road.

"keeping a lab notebook detailing the contributions made by each inventor during the invention development may be helpful for determining proper inventorship down the road"

Accordingly, taking steps to ensure proper naming of inventors will help your patent from going down with the inventorship. Finally, it is important to find a patent attorney who takes the time to understand your technology, business model, and work processes to ensure that an IP strategy is executed in a focused and efficient manner.

"it is important to find a patent attorney who takes the time to understand your technology, business model, and work processes to ensure that an IP strategy is executed in a focused and efficient manner."

Intellectual Property Infringement and Patent Law   Why You Need a Loan Modification Attorney When Your House Is On The Line   Intellectual Property Lawyers and How to Tackle IP Litigation   Basics of Trademarks for Small Business   

Patent and Trade-Secret

"Patents" and "Trade-secrets" are used by companies and organizations to protect their inventions and discoveries from being copied unlawfully. Most of the companies often face a choice between these two IP protections. Each has advantages over the other and both should be considered meticulously while going for the appropriate intellectual property strategy.

A "Patent" is a right granted to inventors by the government of a concerned country to provide exclusive rights to make, use, import, sell and offer for sale inventions for up to 20 years. This right equips owner companies to make profit from an invention or inventions in exchange for disclosing its invention and the process of the invention. For example, many Pharmaceutical companies patent their molecules and the process of developing the molecule which gives them an exclusive right to manufacture that molecule for at least 20 years. No other company or companies can manufacture or sale this product without the prior approval of the patent holder company. However after 20 years this invention becomes public and any competitor (Individual or Company) can use the same invention and product to make profit out of that.

On the other hand "Trade-secrets" are information (e.g. a recipe, pattern or formula) that provides value to its owner because no other company or individual has the ability and authority to duplicate it even after 20 years also, as the information is never made public by the government. Companies can make profit out of that product as long as they can keep the invention secret and confidential. For example many soda manufacturing companies have never disclosed the ingredients in its soda. In doing this companies ensure that no competitor can ever make the same product.

"Patents" and "Trade-secrets" are interchangeable; means "Trade-Secrets" can become "Patent" at any point of time if the Trade- Secret holder wish to do so. This can be done after filling the appropriate patent application with the concerned government. However the reverse is not possible means a "Patent" cannot be converted into "Trade-Secret" because the invention is already in the public domain.

As told in the previous part of the article that most of the companies often face a choice between these two forms of IP protections. Each has advantages over the other and both should be considered meticulously while going for the appropriate intellectual property strategy. Here is a list which compares between these two forms of IP protections.

• A Patent is generally recognized as the strongest form of IP protection, because the Patent protects the procedure and method of the invention regardless of how it looks.

• A patent can be enjoyed by the patent holder up to a period of 20 years after which it becomes public and any competitor can use it for economical benefit, on the other hand a Trade-Secret holder can enjoy its exclusivity even after 20 years and as long as they can keep the invention secret and confidential.

• One of the most beneficial aspects of Patent is that even if any competitor company develops a product independently and coincidentally which includes the patented concept, the patent holder can infringe the patent of the new company, while such kinds of advantages cannot be availed for Trade-Secrets.

• Patents are not at a risk of becoming public (at least for 20 years) while Trade-Secrets are always at a risk of becoming public. Accidental disclosures, departing employees, and even mandatory disclosures (such as a list of ingredients on food packaging) can all disclose the trade-Secret publically.

• A trade-secret proves to be most effective when the secret cannot be reverse-engineered.

Sum-up: As a conclusion we can say that Patents and trade-secrets both have their own advantages and disadvantages, depending on the type of the patent, and other available criteria. Companies need to do a meticulous analysis of both the forms of IP forms Patent and Trade-secrets and should choose what fits most to them.

Intellectual Property Infringement and Patent Law   Why You Need a Loan Modification Attorney When Your House Is On The Line   Intellectual Property Lawyers and How to Tackle IP Litigation   Basics of Trademarks for Small Business   Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Revocation of Patent

A patent is a territorial right which excludes others from making, using, selling or manufacturing. A patent get published after eighteen months from the filing or priority date.

Any person can file an opposition within six months from the patent publication based on the prescribed grounds which is called pre-grant opposition. After patent is granted, within a year a person interested can file opposition based on prescribed grounds called post grant opposition. If a person has missed these two chances, he has other option to challenge a patent at any time of patent by revocation of patents under section 64 Indian patent Act.

Patent can be revoked anytime during the life of patent by any person interested. Revocation of patents may be brought up in two ways.

1. One is the Intellectual Property Appellate Board where a revocation petition can be filed by any person interested or by the Central government.

2. Another forum is High Court where revocation of patent is argued as a counter-claim in a suit for infringement of a patent.

A notice of any petition for the revocation of a patent under Section 64 must be served to all persons appearing on the register as proprietors of the patent or to have shares or interests therein and it is not necessary to serve notice on any other person.

Revocation of patents can be brought on following grounds:

1. The invention as claimed through the claims in complete specification was claimed earlier through a valid claim contained in complete specification of another patent granted and having earlier priority date.

2. The patent was granted on the application of a person not entitled to apply under the provisions of the Patents Act, 1970.

3. The patent was obtained wrongfully i.e. in contravention of the rights of the petitioner or any person under or through whom he claims.

4. The subject-matter of any claim of the complete specification is not an invention within the meaning of the Patents Act.

5. The invention claimed through any claim of the complete specification is not new having regard to anticipation by previous publication and by prior claim as referred to in Section 13.

6. The invention claimed through claims in the complete specification is obvious or does not involve any inventive step having regard to what was publicly known or used in India OR what was published in India or elsewhere before the priority date of the claim.

7. The invention as claimed is not useful.

8. The complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed. The description of the method or the instructions for the working of the invention is not themselves sufficient to enable a person ordinarily skilled in the art to work the invention and also the complete specification does not disclose the best method of performing the invention which is known to the applicant and for which he was entitled to claim protection.

9. The scope of any claim of the complete specification is not sufficiently and clearly defined or the claim is not fairly based on the matter disclosed in the specification.

10. The patent was obtained on a false suggestion or representation.

11. The subject of any claim of the complete specification is not patentable under the Patents Act, 1970.

12. The invention was secretly used in India before the priority date of the claim.

13. The applicant for the patent has failed to disclose to the Controller the information and undertaking regarding foreign applications or has furnished false information.

14. The applicant contravened any direction for secrecy relating to inventions relevant for defence or made / caused to be made an application for the grant of a patent outside India without prior permission from Controller.

15. The leave to amend the complete specification before the Controller and Appellate Board or High Court was obtained by fraud.

16. The complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.

17. The invention as claimed was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

18. The applicant has made the application abroad before filing it in India or without taking permission from the controller or in contraversion.

19. The complete specification does not clearly mention or wrongly mentions the origin or geographical source of biological material.

Other than this patent revocation can be made by Central Government directions if Invention related to Atomic Energy according to Sec 65 of Indian Patent Act and it can be revoke by public Interest according to sec 66 of Indian Patent Act.

Revocation of a Patent or Amendment of a Complete Specification on Direction from the Government in Cases related to Atomic Energy: Under Section 65, where at any time after the grant of a patent, the Central Government is satisfied that a patent is for an invention relating to atomic energy for which a patent cannot be granted under the Atomic Energy Act, 1962, it may direct the Controller to revoke the patent. The Controller may then give notice to the patentee and all the persons who appear on the register as having an interest in the patent, and after giving them an opportunity to be heard, he may revoke the patent.

Revocation of a Patent in Public Interest: Under Section 66, where the Central Government is of the opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked.

Intellectual Property Infringement and Patent Law   Why You Need a Loan Modification Attorney When Your House Is On The Line   Intellectual Property Lawyers and How to Tackle IP Litigation   Basics of Trademarks for Small Business   

Patent Costs Timetable for the Independent Inventor - Be Prepared Before You Draft!

As an experienced patent professional and a proud father of nine children, I like to compare writing a patent to having a baby. Like having a baby, the patenting process starts with great difficulties and expenses, and, like children, the difficulties and expenses increase over time. Like children, proper preparation before you start can save a lot of money and heartache later.

Many applicants invest significant money into a patent's application in multiple countries and later realize that they don't have enough money to prosecute examination and are forced to abandon the applications. The result is loss of all money investments, and loss of the idea (which has been published and becomes public domain).

In Short: before you start writing a patent application: 1) make sure that you are sure what you are patenting and that it is really a valuable idea; 2) make a thorough patentability search (see our previous blog); 3) plan what you are going to do with the idea sell/license/or market; 4) Make a cost timeline for Searching/Drafting/Prosecuting/Litigation; and 5) plan how you are going to get the money to cover costs.

The amount of time and cost of patenting an idea is variable. It is possible (and sometimes advantageous) to draw out the patenting process. It is also possible (and sometimes advantageous) to hurry the process. Acquiring a patent in a foreign country is generally much more expensive than acquiring a patent in the US. Patenting strategies and foreign filings are complex issues which I will not discuss here.

Before you put out a lot of money on patents, plan for upcoming expenses and be prepared to pay. Request from your attorney/agent an estimate of costs before you agree to any work. Make sure you know what is and is not covered in the estimate. If there are technical errors or corrections to the drawings, who will pay? Do you have to pay extra for filing the IDS (Information Disclosure Statement)? Herein I present a rough cost estimate for acquiring a new patent (in the United States):

1) Make a thorough prior art search. To do a proper search you need to have a clear idea of your invention. You should start by doing a search yourself and if you remain convinced that your idea has value hire a patent agent/attorney to do a more thorough search. Beware of cheap, one-shot searches. They are almost never sufficient. (More detailed on searching and some on-line resources are available in my previous blog.)

2) File a US provisional application: minimum cost = $100 USPTO fee. I recommend writing your own description of your invention and giving it to a patent agent to check for enablement. You can file it yourself or have your agent file. By the end of a year the provisional expires and you must file a full application to preserve your rights. Make use of that year. Be sure that well before the end of the year you have your invention in a final working form and you have enough money for the filing the full application.

3) Draft and file a US application. The USPTO filing fee is around $500, you may file yourself, but drafting a patent is a tricky process and not recommended for the uninitiated. Law firms charge from $5000 to $15,000 to draft a typical application. Individual patent agents can be found who will often do a better job at a lower price. You can help your attorney/agent by supplying a clear description of the invention. You can save money by supplying your attorney with patent quality drawings (BLACK and WHITE no color no gray shading) (for more on how to make drawings see How to Make Patent Drawings by David Pressman). There are numerous good books for the layman on patent drafting e.g. Patent It Yourself by David Pressman, and The Patent Writer by Bob DeMatteis et al.

A word for the wise It is tempting to save money on patent drafting, but it is not recommended. A poorly drafted patent may be invalid or unenforceable. A clear, concise, well written application will save time and money during examination. Also a well written application is more likely to attract investors.

4) Patent examination (prosecution) costs are extremely variable and hard to predict. In the best case scenario, after 1-3 years a patent undergoes examination entailing 2 to 4 office actions costing from $2000 to $4000 each for a total of about $10,000 to $20,000. Be aware, if you think your patent is worthwhile, you need to have much more money available, because sometimes it is necessary to apply for an RCE (request for continued examination) a divisional application or an appeal of a decision of the examiner. In such cases the costs could be considerably more.

After an application is allowed, you must pay an issuance fee of about $1500 and maintenance fees at 3.5, 7.5 and 11.5 years after grant.

Intellectual Property Infringement and Patent Law   Why You Need a Loan Modification Attorney When Your House Is On The Line   Intellectual Property Lawyers and How to Tackle IP Litigation   Basics of Trademarks for Small Business   Intellectual Property Monetization Is More of a Moral Issue