Patent Law

No. Reduction to practice can be accomplished on paper only and before any working prototype of a product or process is prepared or perfected. Preparing and filing a patent application can be reduction to practice. An invention that is conceived by one or more inventors must be reduced to practice before the filing of a patent application. “Reduction to practice” can be describing the invention in words and/or drawings. The drawings can be hand sketches, process flow charts, or more elaborate forms like CAD or other computer-generated drawings or models. Text is needed that identifies features in the drawings and describes how they work or function in the invention. The number of drawings required for a patent application depends mainly on the complexity of the invention. In the case of a food or nutritional supplement product, chemical, or pharmaceutical invention in the form of a unique composition or mixture of known ingredients, no drawings may be necessary. However, that type of invention and many others may include a process for producing or using the invention. A drawing should be provided as a flowchart in such cases to show the steps of the process. In the case of a chemical or pharmaceutical invention directed only to a new molecule or form, the drawing requirement may be met with a depiction of a chemical structure. So, reduction to practice can be accomplished on paper only and before any working prototype of a product or process is prepared or perfected.

It depends. It can be very useful to file a patent application as soon as possible after conceiving of an invention and reducing it to practice. One of the main reasons is that US patent law relies primarily on assigning “priority” for claims in a patent application based on the date a first patent application is filed. There have been cases where someone in another country invents and files a patent application outside of the USA that is closely related or the same as an invention filed as a US patent application just a short time after that foreign application is filed. The US inventor would have no way of knowing about such an “independent invention” because there is a time period before a patent application is published and available to be found in a search. It could be found later during examination of the US applicant’s patent application, or even after a US patent is granted during a third party challenge to that patent’s validity (e.g., inter partes review, aka “IPR”).

The timing for filing a patent application should be considered on a case-by-case basis. Once a basic concept for an invention is reduced to practice, a patent application can be filed before the invention is further refined and perfected. As those refinements are made, additional subject matter in the form of text and drawings can be added to the first patent application. The timing of filing a patent application may also depend on factors such as one’s ability to maintain their invention as a trade secret or otherwise confidential and non-public, their business plan and funding level, a patentability and/or freedom to operate opinion for the invention, whether or not foreign patent rights will be sought, the urgency or need to publicize, market, or begin selling the product or service of the invention, among other things.

A best practice for an inventor or business that has a basic concept of an invention reduced to practice and ready to be marketed to customers, suppliers, retailers, potential licensees, etc. may be to file a first patent application for the basic conception of a “minimum viable product” and consider additional patent applications for follow-on versions. A related best practice can be to file additional patent application(s) including the new feature(s) for the follow-on version(s)/refinement(s) to the basic concept within one year from the filing date of the first patent application AND before publicizing those additional version(s) of the product or service in any way (e.g., advertising, offering for sale, etc.).

Yes. Software may be patented in the USA and other countries. This includes traditional software, smartphone applications, and firmware (e.g., for embedded systems). In some cases, the invention may be claimed narrowly as applied to a very specific commercial or industrial application (e.g., machine learning or artificial intelligence applied to operation of industrial robots, blockchain applied to commercial logistics, control of electric generation systems for reliability and efficiency gains, etc.). In other cases, the invention may be claimed more broadly (analysis or prediction technique generally applicable to any big data set, algorithms for image processing or data encryption, etc.).

US patent law places some unique and stringent requirements that must be met in the preparation of a patent application to a software-related invention. A best practice may be to present such inventions in various ways and framed in a variety of contexts in the patent application. The approach to preparing and prosecuting software and related patent application is unique and more rigorous as compared to other types of inventions involving electrical, computer, and mechanical engineering, communications, and materials science technology, for example. Applying knowledge of the special requirements early on in preparing patent applications in the software arts helps ensure a successful outcome during patent examination and after a patent is granted.

No. Reducing a software invention to practice so that a patent application may be filed can rely on higher level software engineering and design documentation such as process flow charts, logical state diagrams, representations of data structures, etc. Accordingly, a patent application for such technology may be prepared and filed even before the design is implemented in executable code.

Yes, but it depends on the facts and circumstances of any particular case. General considerations and factors to consider include the nature and extent of any change to the structure and/or function of a feature of the existing invention (which may include the elimination of the need for a structural component and/or the addition of a new structure having a new function), whether the existing invention is being put to use for a different purpose, the extent to which the improvement or other modification to the existing invention provides a benefit in some technical or other way and being able to effectively articulate that in a patent application, etc.

An inventor’s approach to this question may include a “design around” process where the existing designs and/or processes of others are studied, with improvements being conceived and reduced to practice in preparation for filing a patent application. Some such improvements may include a new process to make an existing product or material more quickly or cheaply. Similar considerations may apply to improvements or modifications to one’s own already patented patent or pending patent application. In the latter case, additional considerations come into play because the patent or pending application may be considered as “prior art” to the improvement and be cited against it during patent examination even though the new patent application directed to the improvement may be owned by the same applicant.

Yes. A US patent only provides patent rights within the jurisdiction of the USA. One may file patent applications in individual foreign countries within one year after filing a US patent application. This is a strict deadline and if not met, the potential for foreign patent rights is forfeit even if a US patent is later granted. It is often difficult to anticipate which foreign countries an invention may be worthwhile to file a patent application in. The international (aka “PCT”) patent application process provides a cost effective way to extend the aforementioned on year foreign filing deadline to up to 2.5 years. This additional time can be very useful to gain more knowledge and insight into foreign markets for the invention, seek partners in the USA and abroad for licensing or sale of the invention and intellectual property related to it, research and validate the market and sell products/provide services related to the invention in the USA, develop and refine a business plan, obtain necessary funding, etc.

A granted US patent provides the right to exclude others from practicing the claimed invention for up to 20 years after the application is filed. “Practicing” the claimed invention includes making, using, offering for sale, selling, or importing into the United States. Foreign patents may provide similar rights in their jurisdiction for a similar term of protection. The licensing and/or sale of patents or other forms of intellectual property can be an important aspect of a business plan. Where a potential licensee or buyer of a patent is interested in commercializing an invention outside of the USA, a patent that is either granted or has the potential to be granted in a foreign country of interest to that licensee or buyer may be viewed as being more valuable and so may increase the valuation of the licensor or seller’s company.

When an inventor or business can reasonably anticipate that foreign patent rights can add value to their business plan or could be of interest to a present or future partner like a licensee or buyer, direct foreign filings or filing an international (aka “PCT”) patent application should be considered in addition to seeking US patent rights. Without foreign patent rights existing for a corresponding granted US patent, any third party can freely “practice” the respective invention outside of the USA without legal recourse.

A design patent application claim seeks to protect rights to a unique ornamental appearance of an article of manufacture. Features protectable by a design patent may include shape/configuration and/or surface ornamentation of an object that is not otherwise eligible for a utility patent for whatever reason. By contrast, a utility patent claim seeks to protect how something works, functions, or is used. A simple example is a ball point pen that was covered by a utility patent over a hundred years ago being made to have a new ornamental appearance that is eligible for a design patent. In some cases, an invention that can potentially be protected under a utility patent application can also be eligible for a design patent, and the two types of patent applications may be filed and prosecuted concurrently. The process and laws with the preparation and examination of design and utility patent applications differ substantially, but each type of patent can be valuable to a business alone or in combination with one another.

Yes. While clearly not as valuable as a granted patent, a patent application can still add value to a business in various ways. A patent applicant having formally filed a US or international (aka “PCT”) patent application is legally entitled to use the phrase patent pending in marketing or other communications related to the claimed invention. This can have a deterrent effect to potential competitors for the goods or services of the invention and so provide benefits for the patent applicant to further develop the market for the invention. A US patent application will be published unless the applicant requests otherwise.

When published, the patent application becomes available for use by US and foreign patent examiners as “prior art” as to any future domestic or foreign patent applications directed to the same or similar inventions. As such, competitors seeking patent rights to the same or similar inventions will be frustrated in their efforts and the patent applicant may enjoy extended opportunity in the market and other benefits such as the “goodwill” of customers or supply chain participants which can be protected under valuable trademark rights even if a patent is never granted.

Patents and other intellectual property (IP) are sometimes referred to as intangible property in contrast to real estate and other tangible property. Like tangible property, IP can be assigned a monetary value. One approach to valuation of a patent (or even a pending patent application) is to consider the revenue or profit achievable to the patent owner providing a patented product or service to customers as compared to the achievable revenue or profit for the same product or service absent the patent rights associated with it.

This approach may assume a reasonable annual growth rate of sales and a rate of inflation for the per unit sale price of the good or service. The remaining term of protection for the patent may also be considered. A main underlying concept in this approach is that a patented good or service may be sold at a premium price due to the absence of competition in the market during the term that patent rights are in force. We utilize a network of trusted IP valuation experts to provide valuation reports for individual intellectual property assets or portfolios.

Yes. Typically, we work with the patent attorney handling the foreign company’s trademarks in the respective country to file US patent applications on behalf of the company. One route to accomplish this is as a US “national stage” application of an international (aka “PCT”) patent application previously filed in a foreign country.

To mitigate risks and increase the odds of a favorable outcome, a patent owner who suspects infringement of their rights by a third party should undertake a careful study of the product or process in question. Documentation of such a study should include a detailed comparison between the features of the suspected infringing product or process and the elements recited in the claims of the issued patent. Working with a patent attorney in this investigation stage can be very beneficial to develop and analyze evidence and provide a high level of confidence before taking appropriate legal action.

No. This isn’t required under US law, but it can provide some useful benefits. Providing text such as “US Pat. 1,234,567” on a product may seem like a hassle and an unnecessary expense for a patent owner, especially if their existing production process or marketing materials are not designed to accommodate that. An alternative for some products may be to provide such marking on the product packaging. For a patented process or service, marking to identify any corresponding patents may be provided on websites and advertising materials. Another option some patent owners utilize instead of physically marking the product itself is known as virtual patent marking. That technique still requires text to be printed on product packaging or marketing materials for a process, but takes the form of the word “patent” or “pat.”, followed by a website address. This website should list the relevant patent numbers linked to the product, process, or service, enabling the public to check the associated patents. In addition to having a deterrent effect on potential infringers, marking or virtually marking with patent numbers provides constructive notice to potential infringers that the product or service is patented. This enables a patent owner plaintiff who is successful in a patent infringement to be eligible to collect damages back to the start of the infringement by the defendant. This is contrasted with infringement by others of a patented product or service that is not so marked. In the latter case, actual notice of infringement must be provided to the accused infringer by the patent owner, and damages that a successful patent infringement plaintiff can obtain will be limited to the date the defendant was provided actual notice.

Some of the above considerations may also apply to marking with the phrase “patent pending” for a product, process, or service that is the subject of one or more utility and/or design patent applications which have not yet been granted. Note that using the aforementioned marking where there are no issued patents or pending patent applications covering it is a violation of federal law and could subject one to penalties.

It depends. The current guidance of the United States Patent & Trademark Office (USPTO) is based on the premise that only a human may be named as an inventor in a patent application, and that a patent is only legally valid and enforceable if the correct inventorship is listed. An AI system may not be named as an inventor in a patent application. The USPTO does not require disclosure by a patent applicant of the use of an AI-based system. Inventions made with AI-assistance are not categorically ineligible. Rather, patent examiners take a case-by-case/claim-by-claim approach which includes assessing the significance of the contribution made by one or more human inventors to the claims under examination. Foreign jurisdictions including the European Patent Office (EPO) and the United Kingdom (UK) have taken similar positions as the USPTO on this topic. Like the question of the eligibility for copyright protection for AI-generated creative works, the law and policy with respect to patentability of AI-assisted inventions is still evolving.