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PREMIUM LEGAL RESOURCES LEGAL FORMS ASK A LAWYER

Excerpted from a '95 Patent It Yourself On-line Seminar on AOL

Our topic today is: "Patent It Yourself" Our guest is Patent Attorney David Pressman author of: Patent It Yourself & Patent It Yourself

Issue: Aren't you, as a patent attorney, hurting yourself by writing a book like Patent It Yourself, which tells people how to get a patent without a patent attorney?

Pressman : No, since the book stimulates more interest in patents and actually creates more business for patent attorneys since not everyone wants to do it themselves - some use the book to learn about the process so they can use a patent attorney more intelligently. I don't want any more clients anyway.

Guest#1 : I have an idea that I think is pretty big. What's my first step?

Pressman : Make a written record of the invention, and sign and date it. Then write "witnessed and understood" under your signature and then have 2 friends or co-workers sign and date it. That way you can prove you invented it and when you invented it in case any problems should ever arise.

Pressman : The next steps are... to build and test it if possible, make a written record of that also, evaluate it for commercial potential, and make a patentability search of it. If it appears commercially viable, and patentable, then prepare and file a patent application, all of these steps are explained in Chapters 2-10 in Patent It Yourself.

OK David what makes an invention patentable?

Pressman : There are four legal requirements for patentability... 1. It must be in a statutory class, that is,. it must be a machine, an article, a process, a composition or a new use. Of any of the first four... It also must be useful, novel, and unobvious. That's 2, 3 AND 4 combined...

Guest#2 : I've heard that one can protect an idea by other means... such as Proprietary disclosures How protective is this technique?

Pressman : Not very. A signed and witnessed disclosure... will only help if someone steals the invention from you...or invents it independently of you... and gets into an interference with you, provided you and this other person both file patent applications. However, if you just make a Witnessed Disclosure, and do nothing else and the other person independently makes the invention or files a patent application on it, you'll have no rights against this person.

Issue: How should one choose between the various forms of coverage (patent, copyright, trademark, and trade secret) for a creation?

A patent is used to create a monopoly on inventions, such as circuits, chemicals, gadgets, machines, etc. Copyright is used to create a monopoly on a particular form or artistic or creative literary or other expression, such as book, play, photograph, computer program, statue, or other work of art. A trademark is a brand name, such as COKE, Ford, the Mercedes triangle, etc.

A trade secret is information which has commercial value and is known to only a small group of people, as in a company. E.g., the method of creating the laser light shows is a trade secret, as is the method of making some computer chips.

Pressman : See the Intellectual Property Mandala in Chapter One, of Patent It Yourself for a portrayal of all the forms of Intellectual Property Protection

Guest#1 : How much does it usually cost to hire a patent lawyer to do a search?

Pressman : About $500-1000. If you're going to hire someone.. It's better to hire someone who is near the Patent Office because a local patent attorney will do that anyway, so you'll avoid having to pay two people in the chain. However, you can make the search yourself at a patent depository library... or using EDS'S Shadow Patent Office, or using EDS'S Shadow Patent Office, or using various online facilities.. One good resource to find online patent resources is Nolo's new book called Law on the Net.

Guest#2 : I've done patent searches in the public library at Milwaukee free of cost.

Great Guest #2.... Go ahead Guest #3!

Guest#3 : If someone signs a NDA on your invention, is it void w/o the products description? I mean invention description

Pressman : No, not necessarily.. Provided that, if you ever go into court, you can prove what subject matter was involved.

Does that help Guest #3?

Guest#3 : Yes. I've been wanting to find a safe way to disclose with net acquaintances that's safe, and I've had to use anNDA without a description on it for various reasons.

Pressman : I'd be very careful about disclosing ANY inventions on the Net.. because anyone could see it and copy it... and you wouldn't even know who they are.

Guest#2 : Who owns the property rights to an invention if the inventor is working for hire but the invention was Guest#2 : made off work hours?

Pressman : Most companies have all employed engineers and technical people sign an employment agreement (discussed in Chapter 16 of Patent it Yourself) under which the inventor assigns all inventions made during the term of employment to the employer provided the invention relates to the employer's business. It doesn't matter whether the invention was made during work hours, or after hours. It still belongs to the employer, if it relates to the employer's business. If you're employed to invent or if you use your employer's facilities time, or materials, to make an invention, but no employment agreement is signed, then you own the invention, but the employer has a "shop right" to use the invention in its business non exclusively.

Issue: How long does a patent last and is it renewable?

Under the new GATT Law, a patent expires 20 years from the filing date of the application. This term can be extended up to 5 years if there is a delay due to an appeal, an interference, or FDA proceedings. Patents are not renewable, except by a special act of Congress.

The new Provisional Patent Application (PPA) (filing fee for a small entity = 75$) gives the inventor an earlier filing date. The 20 year term of any patent starts on the filing date of the Regular Patent Application (RPA). Please note that the RPA must be filed within one year of the PPA date. There are two bills (one in the Senate and one in the House) to guarantee that all patents would have a minimum enforced period of 17 years. I urge you to support these bills --write your Senators and Representative!

Pressman : These bill are H.R. 359 sponsored by Representative Rohrabacher of California and S. 284 sponsored by Senator Bob Dole of Kansas.

Guest#3 : How many basic options are there open to the inventor from inspiration to income?

Pressman : Guest #3, please elaborate.

Guest#3 : For example, marketers, sale, license, self manufacture..

Pressman : The ways to exploit an invention, are portrayed in Figure 11A of Patent it Yourself... basically, you can sell the invention outright, license a company exclusively, license them non-exclusively, or manufacture and sell it yourself, or through others. Use your patent monopoly to charge more than you could in a competitive situation.

Issue: How much should one get if one is able to sell an invention outright?

Try to determine the present value of the anticipated future stream of royalties that the patent would earn over its life. This present value should be reduced somewhat to account for the uncertainty of the future royalties.

Guest#3 : Could you elaborate or give me an example of someone using the patent monopoly

Pressman : Here's an example: An e.g. of someone using a patent monopoly and charging more than they would in a competitive situation is Polaroid, who owns all the rights to instant cameras, and thus charges more than they would charge if competition existed. Also, Sony owns the rights to the Trinitarian TV tube and thus charges more than in a competitive situation.

Guest#3 : That makes sense. Is it possible in a minimal capital situation to do the same and still achieve a broadmarket ?

Pressman : In order to achieve broad market penetration, for a product, you usually need extensive advertising, and distribution no matter how great the invention. Thus, it is usually very difficult to achieve broad market penetration with minimal capital unless, you license the inventions and patent or sell it outright.

GUEST#4 : The Tetris program was reproduced by many authors. Suppose I am author of Tetris initial algorithm and patented it. What are my legal steps to protect my rights?

Pressman : If you have a patent on any type of invention which is being infringed, the first step, is to write a letter to the infringer enclosing a copy of the patent, and asking the infringer to stop infringement or, pay you royalties. If the infringer does not stop infringing or agree to pay you royalties, you must sue the infringer in Federal Court where the infringer does business, or infringes. You have the right to a jury trial, and juries tend to side with the ripped off inventor. Also, if you win the lawsuit, and the infringer's conduct was "willful", you can get triple damages and attorney fees.

Pressman : There is a new bill pending in Congress, H.P.R. 1733 which would mandate that all patent applications be published 18 months after filing. The Administration is seeking this law in order to win concessions from Japan. However, it will harm any individual inventor with a valuable invention. So I urge everyone to write to their representative to oppose this bill.

GUEST#4 : Isn't necessary to take patent on computer program or enough to patent the design which is not put in computer code yet?

Pressman : In order to patent a computer program you must tell, in your patent application how to make and NoloInfo : use the program. Either a listing of the program, or a detailed flow chart, must be incorporated in the patent application. Does that answer your question?

GUEST#4 : No. I am curious about patent on algorithm which may be put an in programming code as put on board game. How about patent of the algorithm?

Pressman : You can't patent an algorithm per se, as yet... E.G. If you have a new algorithm for calculating pi, you can't patent that. The algorithm must be associated with some hardware or process. In order to be patentable subject matter. E.G. A compression algorithm to compress date data, for more efficient transmission can be patented since it goes through hardware.

GUEST#4 : If I put my algorithm in board game and somebody will reproduce it in computer code? How I may protect this kind of action?

Pressman : That type of algorithm could be patented for broad coverage by claiming it broadly so as to relate to any data transmission or manipulating hardware. The claims should be drafted broadly. So that any use of the algorithm with practically any hardware would be covered

Guest#2 : Can patent applications be faxed in ?

Pressman : No. A patent application must be mailed or hand delivered. But further papers can be faxed. The PTO is working on electronic filing.

Guest#2 : Where can one obtain patent/copyright/trademark applications ?

Pressman : A patent application consists of a detailed description of the invention, and drawings plus three forms a transmittal form, a patent application declaration, and a small entity declaration. The description must be typed by you and usually runs five to ten pages for a simple invention. Most inventors use a professional draftsman or a CAD program to do the drawings. The three forms are found in the back of Patent it Yourself (the book) and also in the software version of PIY. Also the Patent Depository Libraries and the Patent Office also have the three forms. Also there is a filing fee of $375.00.

Issue: Various companies advertise on the TV and radio that they help inventors to sell their inventions. Should an inventor use these firms?

Before signing up with any firm, an inventor should ask the firm for a track record, i.e., what percent of its customers have received more money back in royalties than they paid the company? I have never heard of a company that has demonstrated an acceptable track record in this regard. I believe one's chances would be greater if one invested the money in a state lottery.

GUEST#4 : Does your book include example of "broad coverage"?

Pressman : To obtain broad coverage on an invention you should disclose as many embodiments as you can think of in the specifications and drawings of the patent application and draft your claims as broadly as possible. To draft broad claims write your main claim so that it includes as few elements as possible and recite each element as broadly as possible. I tell how to do this in Chapter 9. Of course a claim must be specific enough to define over the "prior art" otherwise the patent office won't allow it.

GUEST#4 : Thank you, warmly for supportive comments.

Pressman : You are quite welcome, and I wish you good luck.

Guest#3 : Someone told me that patenting shouldn't be done til after product evaluation is completed. Is this a good enough approach?

Pressman : That is correct. Since a patent application takes time to prepare and the filing fee is substantial all inventions should be carefully evaluated for commercial potential (Chapter 4) before filing a patent application. Also, of course it's desirable to make a search and evaluate the invention for patentability before filing although, no search can ever be 100% certain since there's no way to search pending patent applications.

Guest#3 : Thanks for your time. I plan to buy your book. Is the $75 route covered in book?

Pressman : Yes, it is covered in PIY.

Guest#3 : Thanks... God bless.

Issue: Throughout your book there are illustrations of wacky inventions. Were these really patented and why does the Patent And Trademark Office issue patents on such things? Wasn't there a dispute about an inventor who tried to get a patent on a perpetual energy machine?

Yes, all of them were patented. The Patent and Trademark Office does not review the merits of an invention before it grants a patent. So long as the invention is novel, useful, and unobvious, the PTO will grant a patent, no matter how silly the invention is.

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