When a patent is in force, the owner has a monopoly on who can make and sell the underlying invention (or at least what’s covered in the claims).  So determining whether or not a patent is in force can often be a million dollar question.

Patents can be expired for several reasons: age of the patent, failure to pay maintenance fees, or invalidation.  The problem is that the Patent Office doesn’t have any simple way of indicating whether or not a patent is in force.  They don’t just put a big “EXPIRED” stamp on patents.  So here are some guidelines and places to look for expiration information.

What is the time frame of the patent protection?

The calculation of patent lifespans was changed in 1995.  Here’s the breakdown:   

1. If the patent is issued before June 8, 1995, then the patent expires 17 years after the issue date.
2. If the patent application was pending on June 8, 1995, then the term is the longer of 17 years after issue or 20 years after filing + any patent office granted extensions.
3. If the patent application was filed after June 8, 1995, then the term is 20 years after filing.

Term Adjustments

A patent can have its term adjusted if the pending period was overly long.  Typically, these patents will have an * by the patent number on the cover page, and the length of the term adjustment will be one of the items listed on the cover.

Conversely, a patent can have its term shortened if it claims back to an earlier priority document.

Checking Public PAIR & Patent Maintenance Fee Pages

The records for all recent patents can be found in the USPTO Patent Application Information Retrieval system (PAIR). Here you can see if a patent is abandoned due non-payment.

If you want to be thorough, you can easily jump from the PAIR entry over to the USPTO Fee Payment Center and get the status of fee payments.  Again, the status will indicate if the owners are paying the maintenance fees or if they have let the patent go.

If you’re wondering whether or not your invention is patentable, you’re probably simultaneously wondering if your invention might infringe on someone else’s patents.  These two questions go hand in hand, and they seem to be a rephrasing of the same question: should I go ahead with this?  There’s just one problem, answering these two questions is a very different process with a very different price tag.

Here are the two questions restated:

The Patentability Question: In light of the prior art discovered in my patent search, could I get a patent if I applied for one?

The Patent Infringement Question: Could I take my invention to market without fear of being sued for patent infringement?

One question assumes you want to move toward your own patent.  The other assumes you want to move directly to the market.  This is another reason why these two questions always crop up together.  It’s really about determining where to budget money and where to take risks.

Non-Infringement

The process for a non-infringement search and opinion — also called clearance or freedom-to-operate – is much more attorney-intensive.  The project should be overseen and managed by a patent attorney, preferably one with litigation experience.  This is because the questions all surround potential for litigation.  Although the attorney may not do the actual searching, he or she will be responsible at the end for rendering the opinion on your freedom to operate.  Carrying that responsibility requires lots of time and in-depth analysis, which is why it costs a lot more to do a clearance search and opinion.   Ultimately the attorney has to take your invention and anchor it in safe territory.  It may be that there is simply nothing in the patents, or the technology all relies on expired patents.

Patentability

With patentability, you’re trying to answer the question of what the patent office is likely to do if you apply for a patent.  A registered practitioner (either attorney or agent) can advise you on patentability.  The costs for the opinion are usually significantly lower than a clearance opinion because the time investment is less.

Of course, it’s still possible to be sued for patent infringement if you have your own patent. This happened to Apple last year.  They lost a patent infringement case in connection with their cover flow feature.  Shortly after losing that case (later overturned on appeal), Apple was awarded a patent for this exact feature.

Getting sued is always a possibility, especially if you have any success.  That’s why there’s so much litigation in wireless.  If it’s profitable, there will be litigation.  That doesn’t mean you shouldn’t go for it.

We are sticklers for detail, and so when talking with customers, we often use the very clunky term “USPTO registered practitioner” when other people would just say “patent attorney.”  We use this term, registered practitioner, because patent attorney is too narrow.  Also, you may miss an important detail about registered practitioners, namely that they are registered to practice patent law.

A USPTO registered practitioner is an individual who is credentialed by the US Patent & Trademark Office to represent people or groups before the Patent Office in matters relating to patents – mainly in the submitting and prosecuting of patent applications.  To gain this credential, a practitioner most meet a minimum educational requirement (that is, they have to have a sufficient number of college credit in engineering or sciences) and pass a test of knowledge of patent law (the Patent Bar exam).  Also, registered practitioners must maintain standards for ethical behavior in their practices, and they are subject to review by the Patent Office to ensure that they are properly serving their clients.

There are two types of registered practitioners, patent attorneys and patent agents.  Patent agents have only their registered practitioner credential, which means that they are only allowed to practice patent law before the Patent Office.  Patent attorneys can practice patent law and engage in other forms of legal representation, such as preparing and negotiating licensing agreements, and representing parties in court.  In addition to having the registered practitioner credential from the Patent Office, a patent attorney  will have a law degree and be a member in good standing of a bar association.

In the eyes of the Patent Office, a patent attorney and patent agent are the same thing.  Both can represent you throughout your patent application process.  It’s only in the other areas outside the patent office where there is a difference.

Questions

Where do I find a Registered Practitioner?

When we do a search for an independent inventor, we offer referrals to registered practitioners in our network.  These are practitioners whom we do search and administrative assistant work for, so we do have ongoing relationships with then.

If you are looking to hire a registered practitioner, you can check to see if he or she is in good standing with the Patent Office by checking the USPTO Office of Enrollment and Discipline webpage.  All practitioners have registration numbers, which you can search in the OED database.

Why would I hire a patent agent if they are limited?

Good question.  After all, there are lots of things that could come in the future that would require an attorney, so doesn’t it make sense to just start with an attorney? My answer is that although patent agents are limited to just practicing before the Office, they can still be very good at what they do. Also, many patent agents have greater experience on the technical side of invention and not just that patent writing side.  We work with several patent agents who regularly take on design and CAD projects for their clients.  It’s really more a matter of working with someone you think will do a good job for you on your application.

One other thing to keep in mind if you are looking to work with a patent attorney is that they may limit their practice area to just handling patent applications and nothing more.  In other words, they may not serve in litigation matters.

Can’t I Just have my attorney friend represent me?

People often have attorney associates (my cousin Vinny, for example) whom they would like to work with on submitting a patent application.  Unless the attorney is registered by the Patent Office, this is not allowed.

What about trademarks?

Though they call it “the US Patent & Trademark Office,” these two branches of IP have many distinctions, and one is that trademark representation does not require the registered practitioner credential.  However, you do have to at least be an attorney to represent a client in a trademark matter.  Again, don’t just hire your cousin Vinny because he’s cheap.  Make sure that your attorney actually practices trademark law.

Scam invention companies are prevalent all over the country, in spite of legislative and regulatory attempts to shut them down. Recently we learned that an old friend of ours was taken by a well known invention scam company to the tune of $36 thousand dollars. We decided to write out an article of things detailing some of the characteristics of an invention scam company.

Secrecy Obsession

From the first phone call, invention scammers want you to be distrustful everybody but them.  They are the major proliferates of the “stolen invention” stories, which are rarely if ever true.  They want you to believe that everybody else in the industry (every patent attorney, every prototyper, etc.) is out to steal your invention.  That way you will only trust them.  What they are really trying to do is keep you from working with anybody else.   There is a place for secrecy, but you can’t be obsessed with it because you’ll paralyze your business.

Over-the-Top Praise

“Your Invention is simply amazing!  In fact, we already did all the research on it, and we believe there is huge, huge potential.”

Praise is the hook that gets most people.  Once you’re convinced that you have a brilliant idea, you’re far more likely to put your money behind it.  After all, you’re investing  in a sure thing.  The truth is, it’s very likely your invention will not succeed, at least not at the beginning of the process.  And it probably isn’t new.  This is on of the reasons why we think patent research is so important early in the process..

Bundling Services

Once they have you hooked, they will lay down a plan for bringing your invention to market, a very expensive plan.  They will deliver a thick three-ring binder detailing all of the services you simply must buy from them if you want to succeed. The services will run the gamut from patents, to marketing, to prototyping, to pitching. It will all be bundled together, and they will push like crazy for you to buy the whole thing. Again, if you believe your invention is a sure thing, you’re much more likely to pay for whatever services they are telling you that you need.

As a rule, you should always avoid companies that bundle their services or claim to be experts in every area. Bundled services may sound like a better, more streamlined way to work, but the truth is that they won’t be good at anything except putting on a show for you.

Pushing the Pitch over the Patent

In 2008, the USPTO issued a rule (Rule 11.5b) that was supposed to make it much more difficult for registered practitioners to work with invention submission companies.  Our interpretation of the rule is that there can no longer be an intermediary between the client and the practitioner.

Invention scammers used to try to put themselves between the inventor and the practitioner, both in communication and in billing. With the implementation of the new rule, they could no longer do this. So they changed tactics and belittle the importance of patenting.  Instead what was important, they said, was getting your invention in front of companies who would be interested in paying for the whole thing, including applying for a patent. In a way, this sounds even better than before because they were offering you a route to success without even having to pay the patent. They would always claim to have close relationships (NDAs is already in place) with various companies who buy inventions. So they still push all the other services, market research, preparing reports, 3D modeling, prototyping. But instead of going the patent route, they would go the “pitch” route.

Always watch out for people who claim to have all the industry contacts.

Pushing Design Patents

While it’s gotten harder for scammers to use patents, when they can they will. This is because they know that getting you a patent is a great way to encourage you to continue spending.  So what they will often push is a design patent. Design patents are not the same as utility patents in terms of what they cover. Design patents only cover the appearance of the invention. Also, design patents are much easier and much cheaper to get — not that they’ll be passing any of the savings on to you. Unless your invention fits the design patent category, you should avoid people who advise you to go for a design patent.

Of the things to watch out for listed above, flattery is the big one. Honest people who work in the invention development industry will be honest about your chances for success.

Every business needs a website (especially a web-based business).  When we started our web-based business, Simple Patents, in 2005, we built our website from scratch, spending thousands of dollars and months figuring out how to put it all together.  In the end, we had something that worked.  It was secure.  It was informative.  It looked good – by 2005 standards. What it wasn’t (not even one bit!) was adaptable.  Over the years, as our business model changed, our website remained basically the same.  This became more of a liability as time went by.

Up until yesterday, and we were stuck with a website that looked like it was built in 2005 (which it was).  We were stuck with it because the whole framework was just too brittle.  If you made a change on one page, it could blow something up on another page.  If you wanted to move some a pixel over, you had to email the web developer.  Redesigns were impossible.  Add to that the fact that our custom-built site had terrible search engine optimization, and we were pretty much lost.

Enter WordPress

We have experimented with WordPress-based websites for a while now, building websites and blogs with it, including our Attorney Services site.  But we still had our main site built on a custom platform.  There was too much legacy, and too much fear.  In the end, we just decided to bit the bullet and move it all over to WP.  Here are some of the reasons why. 

WordPress Separates Design from Content

When you start a website, you need to consider your appearance and structure.  After you get the whole thing going, you want to have easy access to the content.  WordPress can easily serve as your content management system (CMS).  If you want to add a page, click “Add Page.”  If you want to change the wording on something, click “Edit.”  It’s just that simple.

WordPress is Adaptable

“But isn’t WordPress built for blogging?” you might ask.  “I run a business.  Leave the blogging to Matt Drudge.”

Yes, WordPress was initially built for blogging, but with each successive generation, it has evolved to be more of a double-duty platform, easy for blogs, websites, or both.  If you want to use WordPress as a static website, you need only set up a static page as your landing page, and you’re good to go.  Again, making a change like that takes 5 seconds.

In the Long Run WordPress Will be More Secure

Hacking is all in the game.  Because WordPress has a huge support community, vulnerabilities can be uncovered and fixed much more quickly. 

WordPress is SEO Friendly

I suspect it’s more proper to say that WordPress is SEO neutral – it won’t hurt you in the way that a custom-built site will.  We have found that content on our WordPress sites will show in Google search results, while our old website never got any traction.  Better SEO also means cheaper Adwords spending, if you use Adwords for advertising.

WordPress is Ours!

The main thing that I love is the ability to control the website. Although we are not a "website company," we are a web-based company. So we have to be in control of our web presence. WordPress allows us to have a great website and do what we set out to do, which is patent research.

There are some trade-offs. We used to have a user account system, for instance.  It will take some time for us to figure out how to redeploy that part of our website. In the meantime, we’re going to work on better content (which is easier to put up) and using our web presence to make more connections with new customers.

Finally, if you have any questions about WordPress, feel free to contact me or call us at out 800 number.

More interesting tidbits from the USPTO’s China Road show

Many American inventors live in paralyzing fear of counterfeiting, especially Chinese counterfeiting.  They imagine their great ideas getting knocked off for cheap by Chinese gangsters and the fake products overrunning every market in the world, including the US.

Counterfeiting is always a threat, especially if your product is particularly counterfeitable – a Happy Meal toy or item of clothing, etc.  And keep in mind that it’s products that get knocked off, not inventions.  Counterfeiters take plenty of risks just by running an underground operation.  They tend to stick with sure things –proven successes — when it comes what they copy.   That’s why there are so many phony Louis Vuitton purses, Calloway golf clubs, and Beats by Dre headphones in the world.  It makes better financial sense to start with a successful brand than to take a chance on an unknown.

Let’s say you do have a product with a proven track record and potential for continued earning.  Then it’s time to think about a global protection strategy.  This means getting patents in the countries where you plan on marketing and getting patents in the countries likely to be the source of counterfeits.

Having IP in China is a big help.  If you have Chinese patents you can stop counterfeit goods from being manufactured and shipped at the source rather than when they enter the US.  US Customs inspects a minuscule fraction of the goods entering the country, so if a knockoff makes it to US shore, it may be too late to stop it.  Unless you’ve taken ample measures to stop it on the Chinese side, you may be too late, even if you’re in the right.

Consult with your patents attorneys and see what can be done for your inventions.  China has several options for patenting.  If possible, get an Invention Patent, a patent that has been examined on its merits.  If you can only get utility model patents or design patents, you should take the extra steps of having them evaluated by the Chinese patent office.  That way if you need to make a case with the government against a counterfeiter, they are more likely to take your side.  You won’t lose time waiting for things to process.

At the Road Show, there was a speaker who specialized in undercover operations – buy-busts.  It was great to get his take on the counterfeiting problem.  He said that although he did a lot of undercover work, he never felt there was any real danger.  Counterfeiters are businessmen, not gangsters.  His attitude toward counterfeiting was that it was much more of a civil/business issue than a criminal one.  The best way to stop a counterfeiter is to catch him in the act.  Of course, criminal enforcement always needs to be on an option, but it should be reserved for true criminal activity.  When someone knocks off a Coach purse, that’s infringement.  When someone make a dangerous product, like a counterfeit drug, that’s a crime.

Everybody agreed that China is working much harder to crack down on counterfeiting.  The government understands this is a big problem that threatens their economic success.  In fact, if trends keep up, China will lose the top position as knockoff capital of the world to Vietnam.

So to stop Chinese counterfeiting, you may have to make investments in getting IP and even engage in a little cloak and dagger work to catch infringers in the act.  But it may still be cheaper than having your markets overrun by counterfeit goods.  After all, everything is cheaper in China – even patent enforcement!

I attended the USPTO’s China Roadshow last week and learned a little about Chinese patents, how they differ from US patents and how the Chinese IP scene works.

An interesting factoid, China’s patent system borrows heavily from Germany.  Apparently, when they were setting up their patent system in the 80s they had a lot of help from Germany.

China has three main types of patents: Invention Patents, Utility Model Patents (petty patents), and Design Patents.  Invention patents are similar to our US utility patents.  They are the only ones of the three that are examined on merit.  Utility model patents and design patents are only examined for formalities, so these can issue in just a few months.  There are mechanisms in place for having a utility model patent or design patent evaluated.  The speaker did not outline how that process works or if it costs extra, but it seemed closer to a true examination, including the possibility of invalidating your patent.

The petty patent exists in many IP systems, and it’s meant to document incremental improvements improvements to an existing invention.   In China, it lasts for 10 years.

You would think that having a whole slew of unexamined patents would lead to more conflicts, but Chinese patents have a similar invalidation rate to other IP schemes in the world.  It goes to show that we in the US are probably expending too much energy on lengthy examinations, especially with design patents.

Another interesting difference between Chinese and American patents is that in the case of design patents, the Chinese system favors photos and CAD drawings over line drawings.  Personally, I think this is a better system because a photo or CAD drawing is a truer representation of the thing.  A line drawing is more a representation of the idea of the thing.  The speaker mentioned that it’s important to follow these rule because a drawing formality may be hard to answer without adding new matter.

Unexamined patents and better drawing requirements are two things we could learn from China.

Pat was a guest speaker at the annual conference of the National Association of Patent Practitioners.  His speech was on patentability research.  This is, of course, our major service to inventors and IP professionals alike, and we know quite a lot about doing good research and getting good results.  So when the folks at NAPP wanted a pro to teach the ins and out of quality research, they turned to us!

Although the presentation was focused towards industry professionals, we wanted to post it because there are some useful tips for anyone looking to do patent research.

The information in the presentation goes along very well with our patent search tutorial available here.  Like our tutorial, the presentation focuses on the importance of class-based search strategy.

Starting about 10 years ago, the USPTO added published patent applications to their searchable database.  As the backlog of unexamined applications has increased, this collection has become more and more important to research.  For newer technology, it’s much more likely to find relevant art in the published applications than it is in the patents.

When we do a patent search, we always search the applications in addition to granted patents.  This is because an application can be used as prior art in the same way that a patent can — in the same way that virtually any public disclosure can.

The biggest difference between a patent application and a patent is that an application has not been evaluated on any level, not just for patentability but for basic operability. So an application can be very sound, well written and definitely on its way to a patent, or it can be a completely inoperable, back-of-the-napkin mess that will never become patent.  Whatever it is, it will remain part of the public record forever, always popping up in your search results whenever applicable keywords or classifications are searched.

So when you see an application that looks like your invention, look it over closely and make sure the application is sound and not just the ravings of a lunatic.

Because patents and applications are often show up together in search results, the shorthand method of telling them apart is to look at the numbers.  Patent number are six or seven digits long; application publication numbers are 11 digits long with the first four digits being the year of publication.  In addition to having a publication number, applications (and patents) have an application number, which is 8 digits long.  It’s usually written with a slash after the first two digits, like this: 12/345,678.

Here are some search results from Free Patents Online.  The patent application (top) is for the patent below it.  As long as you search “smoking and timer” these two reference will come up together forever.

Classifactions are categories into which patents are placed based on their features.  Every patent document contains at least one, and in most cases, 3-4 classifications.  There are just under 500 main classes, which are subdivided into several hundred subclasses each, adding up to over 100,000 classifications.  Notation for class and subclass is written class/subclass.  The home page for the US Class schedule can be found at: http://www.uspto.gov/web/patents/classification/.

A few examples of main classes are: Class 2 – Apparel; Class 220 – Receptacles; and Class 362 – Illumination.  Subclasses are listed in a tree structure, where each subclass further narrows a another subclass.  To see this tree, look at Figure 3.  Here we see the class schedule open to the top of main class 2 – Apparel.  As, seen, a few subclass examples from Class 2 are:

·    2/456  – Apparel/Guard or Protector/ Body Cover

·    2/457  – Apparel/ Guard or Protector/ Body Cover/ Hazardous Material Body Cover

·    2/458  – Apparel/ Guard or Protector/ Body Cover/ Thermal Body Cover

When we do a search, rather than plug keywords into a search engine, we look for classes and subclasses where relevant patents are most likely to be located.  When we find those subclasses, we search them as thoroughly as possible.  In most cases, we will search the top 2 to 5 subclasses completely.  This means going over a much larger set of data, but we do not believe it is possible to do a good patent search using just simple keyword searching.