Pursuing a patent

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Trademarking your invention will protect your investment and propel you ahead of your competitors

Applying for and obtaining a patent can be one of the most arduous experiences an inventor undertakes. Or it can be a simple and straightforward process. Much depends on the invention and how complex it is, the type of patent and how one goes about submitting the application.

Regardless of how easy or difficult the process, Soundings Trade Only spoke with patent authorities, who agree it’s well worth the effort.

“It’s the most satisfying thing you’ll ever do,” said Ryan Dvorak, owner and president of Slide Anchor of Lake Havasu City, Ariz. “It gives you a sense of worth, an incredible feeling of accomplishment.”

A patent also protects your investment — the thousands of dollars you spend on product research and development.

“If you don’t patent [an invention] all you do is engineer it for other companies,” said Bernie Czipri, president of Accon Marine in Clearwater, Fla.

“Many companies are watching you every time you go to a show,” Czipri added. “There are people walking the show and looking at products to come up with cheaper quality knockoffs. That does the most damage.”

“A patent provides 100 percent protection of your product,” he added.

Accon Marine manufactures marine hardware and navigation lights. The company is best known for its Pop-Up cleats. Within the Accon family — patents are granted to individual inventors, not companies — there are more than 15 patents and trademarks combined, with two or three in the works all the time.

Dvorak’s company manufactures anchoring accessories. He has five patents on the books — the Box Anchor, Shore Spike, Quick Cleat, Slide Anchor and Beach Banket — and two more pending.

Dvorak and Czipri each take a different approach in applying for a patent. Czipri uses a patent attorney or agent, which the U.S. Patent and Trademark Office recommends.

“They prepare the application and do research on what’s known or been done before,” said John Love, deputy commissioner for examination policies for the USPTO, an agency of the U.S. Department of Commerce.

Dvorak, however, has learned to navigate the patent process himself without the aid of an attorney. He relies on the book “Patent It Yourself,” written by David Pressman and published by Nolo Press. He says the book provides a complete manual for preparing and filing patents and includes all the documents needed for filing.

“The only reason I started doing this myself was because I was so poorly represented by attorneys,” Dvorak said.

San Diego patent attorney Larry Maxham says lawyers who specialize in this area are better acquainted with the patent process than most laymen. He says it’s the lawyer’s job to get to know the invention as well as the inventor and to present a detailed description to the USPTO.

However, Dvorak says no one knows his inventions as well as he does. He also says patent attorneys tend to get bogged down in legalese, whereas laymen are more straightforward and to the point. Furthermore, he says attorneys only communicate with USPTO examiners through letters, while self-filers have the option of talking to the examiner directly.

That cuts down on the time and cost involved in filing a patent, he says.

Czipri, from Accon Marine, said one of the biggest challenges in obtaining a patent is getting past the USPTO examiner.

“It’s up to them to decide if your product is patented or not,” he explained. “They don’t always understand why a product is unique. It can take three or four times before an application is approved.”

All those delays cost money, another major hurdle of the patent process, according to Czipri. Every time there’s a delay, his attorney has to send a written reply. Between filing fees and attorney fees, each delay can cost anywhere from several hundred to a couple thousand dollars. And that doesn’t factor in your own production delays.

“Nothing is cheap in this process,” Czipri said.

The process begins, of course, with an invention. Love says the USPTO gives patents on machines, articles of manufacture (objects made by humans or machines), composition of matter and processes. Other criteria include new, useful and non-obvious inventions.

What is not patentable is anything that is naturally occurring in nature, abstract ideas and laws of nature.

Also, a patent cannot be obtained upon a mere idea or suggestion. In other words, the application must include a complete description of the actual machine or other subject matter for which a patent is sought.

Before even submitting an application, the inventor and/or attorney should conduct due diligence to see if the product or process is already patented. Love says the USPTO has a searchable database, as do many public libraries. Also, most recent patents can be found through a Google search on the Internet.

The next step is filing a formal application. It’s not enough to just mail a copy of your idea or invention to yourself. Sealing it in an envelope and having a specific date postmarked on the envelope does not protect the invention, says Maxham, the San Diego-based attorney.

“There’s no such thing as a poor man’s patent,” he said.

Typically, the application includes a written document that comprises a specification (description and claims) and an oath or declaration; a drawing where necessary; and filing, search and examination fees.

“Put into words what you claim is your exact invention; that’s where the real value of the patent is,” said the USPTO’s Love.

“You’ve got to paint a picture of what it does and how it does it,” Maxham said.

Dvorak recommends writing a claim as broadly as possible.

“The more broadly they’re written, the less opportunity there is for someone to copy it [without legally infringing on the patent]. The more you specify in your claim the more you narrow down your patent,” he said.

The patent application is examined by a USPTO patent examiner who is educated in the relevant technology. It’s the examiner’s job to determine whether an invention is novel and non-obvious, Maxham explained.

Dvorak says prior art — or another person’s work — is one of the most important aspects in the examination process.

“They will try to find any prior art that is similar to yours,” he said

“They also use the obviousness clause,” he continued. “It’s not patentable if it’s obvious to anybody skilled in the art.”

If the application is rejected, the examiner prepares an office action explaining why the claims of the patent application are not allowable. The patent attorney or agent — or the self-filer — responds by amending the claims, explaining to the examiner why the claims are allowable, or both.

“Your job is to make a case, articulate in a letter how yours is different than previous art,” Dvorak explained. “If you can articulate a really good argument … chances are pretty good you’ll succeed.”

But if the examiner persists in rejecting any of the claims in the application, or if the rejection has been made final, the applicant may appeal to the Board of Patent Appeals and Interferences in the USPTO.

“The Board of Patent Appeals and Interferences reviews your argument and the examiner’s argument to determine if you get the patent,” Maxham explained.

If the board sides with the examiner, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed in the U.S. District Court for the District of Columbia.

Theoretically, the case could eventually go to the U.S. Supreme Court, but Maxham says the court rarely, if ever, agrees to hear a patent case.

Once a patent has been granted, it remains in place for 20 years from the date the patent is filed. The inventor can exclude people from using the product or process, or charge licensing fees.

“After 20 years, anyone is free to make use of the invention,” Love said.

Until then it is up to the patent holder to enforce the patent.

“It’s up to you to keep an eye out for infringement,” said Czipri of Accon Marine. “You have to gather the information and prove that other people are infringing on you.

“It’s a tedious process,” he added.

Protecting your property

Patent infringement occurs when someone makes a product or uses a process that is protected by a patent, explained Maxham, a patent attorney based in San Diego.

A patent granted by the USPTO only protects one’s invention within the United States or U.S. territories. To protect a patent elsewhere, the inventor must file for and obtain a patent within individual companies or governing bodies, such as the European Union.

The best way to avoid infringing on someone else’s patent is to do a thorough patent search before selling a product or filing for your own patent. If there is a potential problem, you can send the patent holder a letter requesting clearance or freedom to operate.

The best way to prevent others from infringing on your patent is to show your invention to as many people as possible, said Dvorak, owner and president of Slide Anchor.

“The more people you show and the more people you tell, the less likely you are to get ripped off,” Dvorak said. “If you keep everything secret and someone steals your idea, it’s your word against theirs.”

Suing for justice

If a patent is infringed in the United States, the patent holder may sue for relief in the appropriate federal court. He or she may ask the court for an injunction to prevent the continuation of the infringement, and may also ask for an award of damages because of the infringement.

The burden is on the patent holder to prove infringement, according to Maxham.

The first step is to compare the alleged infringing product with the patent claim. Next, send a cease-and-desist letter to the person or company you think is infringing on your patent, or offer to grant them a license in exchange for royalties.

Maxham said these letters used to be more benign, and people would settle the issue out of court. But nowadays, people are more likely to sue, he says.

If you’re the defendant in a patent infringement case, you can challenge the validity of the patent claim. The defendant may also argue that what is being done does not constitute infringement.

Infringement is determined primarily by the language within the patent claim. If what the defendant is making does not fall within that language, there is no literal infringement.

Maxham said an infringement suit can drag on for years, costing millions of dollars for each side. That’s why settlement is usually the best option, he says.

“It’s always better if you can come to an agreement between the parties, even if you have to swallow a little crow or pay a little more, than to bring it before a third party where you don’t know the outcome,” he says.

This article originally appeared in the June 2008 issue.

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