Patent Applications

When you develop a new innovation that you believe may be commercially valuable, you should consult with a patent attorney as soon as you have reduced the idea to an enabled, workable form. You should keep your idea confidential during its development and until a patent application is filed, both to protect your idea from theft, and to prevent your own disclosure of the idea from precluding you from obtaining a patent. In the United States, you have one year from the date of any public disclosure (your invention becoming known, used, sold, offered for sale, or imported) to file a patent application in at least one country. In most other countries, if you have not filed a patent application in at least one country by the date of your public disclosure, you lose the right to file an application in that country. By filing a patent application in advance of any disclosures of your invention, you protect your worldwide rights to that invention.

After determining that your idea includes subject matter that is appropriate for patent protection, a patentability search is recommended. The references found in the search can then be compared with your idea to determine the scope of patent protection that is likely to be available.

No. However, if you do have a model, it may be helpful.

The length of time varies considerably. Given the current backlog at the Patent Office, you can generally expect to wait about 3 years from the time the application is filed. More information about the patent prosecution and amendment process can be found here.

Your initial foreign filing must be accomplished within 12 months of any prior US patent application for which you would like to claim the benefit of the filing date. If you have publicly disclosed your invention, you must be able to claim the benefit of an application having a filing date prior to your date of disclosure. In most countries, the initial filing is accomplished with a single international application filed under the Patent Cooperation Treaty. This application serves primarily to preserve your filing rights in countries that have signed this treaty, but also provides a preliminary examination that can be used to address any issues related to patentability prior to filing in individual countries. If you wish to obtain protection in countries that have not signed the Patent Cooperation Treaty, such as Taiwan, you must file applications directly with the patent offices of these countries, usually 12 months from your US filing date. After filing a Patent Cooperation Treaty application, national applications in individual countries where you would like to seek protection must generally be filed 30 months after your original US filing date in order to get the benefit of this date. Applications in the European Patent Office and a few other patent offices can be filed up to 31 months after your original US filing date. Foreign patent protection is very expensive. For most individuals, small businesses, and medium size businesses, Limited resources are better spent commercializing the invention unless specific reasons exist to obtain protection in a specific country.  Read more about foreign filing here:

Before disclosing your idea to others, you should have either a provisional patent application filed, or a confidentiality agreement in place. Having both is better. A provisional application is not examined, but preserves your filing date for one year, providing time to further develop the invention, obtain funding, etc. I can evaluate your specific situation to determine your best course of action.

The scope of patent eligibility for software has been the subject of numerous court decisions. In general, algorithms are not protectable. However, inventions which are directed towards improving the functioning of a computer, or to an improvement to any other technology or technical field are patentable. Additionally, inventions which add significantly more than an algorithm are patentable. Inventions which include elements which are not well understood, not routine, and not conventional can be found to be significantly more than an algorithm, and therefore patentable. Your software should be evaluated for patent eligibility, and if appropriate, a patent search should be performed and a patent application filed as soon as your software is developed to the point that one skilled in the art can be taught to make and use the software. Regardless of whether patent protection is appropriate, copyright registration should be sought after completion and before sale or distribution of the software. More information about protecting software can be found here.

Initially, I will need to compare your claims to the allegedly infringing device to determine whether your patent is being infringed. I can begin by sending a cease and desist letter, explaining and demonstrating your patent rights, and demanding that they stop infringing the patent. Often, this is enough to persuade the other party to stop and/or to enter a license agreement. If not, then we can file suit against the infringing party, seeking monetary damages and an injunction. Once they have been notified of the existence of the patent and a claim of infringement, they must take reasonable steps to determine whether or not they are actually infringing, or they risk a finding of willful infringement. This can result in enhanced damages as well as attorney fees.

You should promptly take action. The merits of the claim of infringement must be promptly investigated. The patent itself as well as its prosecution history at the US Patent and Trademark Office must be reviewed and considered. The claims must be compared with the accused product or process. If the claim is meritless, which they often are, then we can so inform the accuser, and you can continue your activities in relative safety (although that is no guarantee that you will not be sued). If the claim has merit, then steps can be taken to mitigate or avoid liability by stopping infringement, or negotiating a license agreement.

A patent is not a grant of a right to practice an invention. Rather, it conveys the right to exclude others from practicing the invention. It is quite possible to receive a patent for an invention that, if practiced, would infringe another patent. For example, if inventor A holds a patent claiming a black and white television, and inventor B holds a patent claiming a color television, inventor B may not be able to make his invention without infringing the patent of inventor A. It may be possible to resolve the issue through licensing arrangements.

A patent provides protection against any use of the claimed subject matter, regardless of how the subject matter is obtained, for a limited period of time. A trade secret provides protection against the use of wrongfully obtained secrets for as long as the trade secret remains a trade secret. A trade secret only protects against wrongful taking of the secret, and does not protect against independent discovery of the secret.

You should consider patent protection if:

• You need the strongest possible protection for your innovations, including protection from the possibility of independent discovery of your innovations by your competitor.
• Your innovations are potentially subject to reverse engineering.
• The limited duration of a patent (20 years from the filing date, subject to certain extensions of patent term) is acceptable.

You should consider trade secret protection if:

• You are willing to accept the risk that your competitors may independently discover your innovation.
• Your innovations are not easily subject to reverse engineering.
• You wish to keep your innovations secret for a time period longer than the period of enforceability of a patent.
• Your innovations have independent value derived from the fact that they are secret.
• You are willing to take steps to identify trade secrets and to protect the secrecy of these secret.

The best form of protection for each innovation should be determined on a case-by-case basis. Please call me to discuss your specific situation.

I do not recommend doing so. Your intellectual property is a critical asset that needs the best possible protection. Protecting your intellectual property is not only necessary to prevent theft by competitors, but also to attract the investors that may be necessary for commercialization of your invention. This protection can best be achieved by an experienced intellectual property lawyer. A patent application not only includes a highly detailed description of your invention, but must also be drafted to take into account changes that a competitor may make to your invention. The claims of the application - which define the scope and limitation of the exclusive right that you seek - must be carefully drafted, a task which requires years of experience to ensure that it is done well. The rules for issuing and overcoming obviousness rejections are complex and changing. The proper foundation for responding to such rejections must be laid during initial drafting of the application by a patent attorney who is familiar with the process. Once a patent application is filed, no new matter can be added to the application. If mistakes are made, they can be very difficult to correct.

Many inventors file self-prepared provisional patent applications. Provisional patent applications are not examined, but preserve their filing date for one year. A utility patent application claiming the benefit of the provisional patent application must be filed within that year in order to preserve the filing date. However, actual entitlement to the filing date will depend on the extent to which the claims in the utility patent application are supported by the provisional patent application. Any claim containing even a single detail that is not supported by the provisional patent application will not be entitled to the provisional patent application’s filing date. In such a case, any public disclosure of the invention more than one year from the utility patent application’s filing date will result in invalid claims and potentially an invalid patent. Doing a job properly the first time is always easier and less costly than trying to repair mistakes later, and also ensures that rights will not be lost as a result of mistakes or omissions. Please contact me to discuss your needs before taking action yourself.

These document preparation services claim to provide services at lower cost than a typical law firm. However, read the description of what you actually get carefully – the total cost estimate may be lower, but you might not get much for the amount you spend. A patent application is a lengthy, complex document that must be carefully drafted in order to ensure the broadest possible protection for your invention. For more information, read the opinion of the Pennsylvania Bar Association’s Unauthorized Practice of Law Committee here. Consider the value of the intellectual property you wish to protect before deciding who to retain to protect these valuable assets.

I do not recommend doing so. 

When you discuss your invention with me or with another patent lawyer, the confidentiality of that discussion is protected by the Rules of Professional Conduct.  Depending on the terms of use of the artificial intelligence platform, submitting your invention disclosure to the platform may result in agreeing that they own anything you submit so that your invention can then be used to teach the artificial intelligence platform.

Furthermore, the limitations of artificial intelligence as it currently exists are best explained by Judge Brantley Starr of the United States District Court for the Northern District of Texas. Judge Starr explains:

“All attorneys and pro se litigants appearing before the Court must, together with their notice of appearance, file on the docket a certificate attesting either that no portion of any filing will be drafted by generative artificial intelligence (such as ChatGPT, Harvey.AI, or Google Bard) or that any language drafted by generative artificial intelligence will be checked for accuracy, using print reporters or traditional legal databases, by a human being. These platforms are incredibly powerful and have many uses in the law: form divorces, discovery requests, suggested errors in documents, anticipated questions at oral argument. But legal briefing is not one of them. Here’s why. These platforms in their current states are prone to hallucinations and bias. On hallucinations, they make stuff up—even quotes and citations. Another issue is reliability or bias. While attorneys swear an oath to set aside their personal prejudices, biases, and beliefs to faithfully uphold the law and represent their clients, generative artificial intelligence is the product of programming devised by humans who did not have to swear such an oath. As such, these systems hold no allegiance to any client, the rule of law, or the laws and Constitution of the United States (or, as addressed above, the truth). Unbound by any sense of duty, honor, or justice, such programs act according to computer code rather than conviction, based on programming rather than principle. Any party believing a platform has the requisite accuracy and reliability for legal briefing may move for leave and explain why. Accordingly, the Court will strike any filing from a party who fails to file a certificate on the docket attesting that they have read the Court’s judge-specific requirements and understand that they will be held responsible under Rule 11 for the contents of any filing that they sign and submit to the Court, regardless of whether generative artificial intelligence drafted any portion of that filing.”

The risks of relying on artificial intelligence are quite real. In the summer of 2023, two lawyers in New York were sanctioned by a court after they relied on artificial intelligence to prepare a brief, and filed that brief without verifying its accuracy. The brief was found to contain citations to about half a dozen fake cases which were asserted to support their position.

Artificial intelligence platforms are not licensed to practice law in any state or before the US Patent and Trademark Office.  Whether patent applications drafted by artificial intelligence have a reasonable chance of allowance with commercially meaningful claims remains unknown.  I have been underwhelmed by the quality of the patent applications I have seen drafted by artificial intelligence.

If your invention is worth commercializing, it is worth protecting properly. A patent application which is prepared to the best possible quality by an experienced patent lawyer prior to filing will maximize the likelihood of obtaining and issued patent with commercially meaningful claims.

Drafting a patent application is not simply filling in the blanks under the appropriate headings.  Drafting a good patent application requires understanding and considering:

1.  The US Patent and Trademark Office requirement for an enabling disclosure for patent claim limitations that are not only foreseen at the time the application is prepared, but unforeseen and necessary to overcome unexpected prior art.

2.  The requirement to disclose the best mode for practicing the invention which is known at the time the application is filed.

3.  The requirements of novelty and nonobviousness.

4.  The requirements for patent claims, taking into account the need for definiteness as well as the need to cover both foreseen and unforeseen variations of your invention.

5.  Ensuring that all elements within every claim are shown in a drawing, even if those claim elements are unforeseen at the time of drafting and are added by amendment later.

6.  Making the patent application understandable not only to one skilled in the art, as well as making the patent application understandable to those who are not skilled in the art and do not have engineering or scientific backgrounds in the event that the patent must be enforced.

Very few inventors are capable of drafting a good quality patent application, including many who are very highly skilled as engineers or scientists.  Trying to draft it yourself will not save me any work.

The best thing you can do to help me keep your costs predictable is to ensure that I have the most complete description of your invention as you can provide.  Please do not limit yourself to any particular format.  Trying to limit yourself to a specific format, such as the format of a patent application, is more likely to result in the unintentional omission of details of your invention rather than saving me any work.

There is no shortage of unscrupulous companies looking to take advantage of the enthusiasm of new inventors. Based on the experiences of clients who approached or used such companies before retaining me, proceed with caution and investigate any such company thoroughly before retaining them. For more information, see the Federal Trade Commission’s web page on invention promotion firms, as well as the related page on the US Patent and Trademark Office website. Search both sites for complaints about any specific companies you may wish to consider. Before doing your search, check with the Department of State in the state where the company is located to determine whether the name is a fictitious name for another company, and perform your search using both names. Additional information can often be found simply by performing an Internet search for the name of the company you are considering.

The answer is "it depends." Taking on an investor is often a necessary and helpful step in the growth of a business. It is also a risky step, and taking on the wrong investor and/or taking on an investor the wrong way can be disastrous. Taking on an investor is essentially taking on a partner. You should only take on partners who share your goals, values, and ethics, and who are actually as capable, dependable, and trustworthy as they represent themselves to be. More information about taking on investors can be found here.

I encourage my clients to use crowdfunding websites to commercialize appropriate inventions. Please understand that crowdfunding has a broad, commonly understood definition, as well as a narrower definition. The broad definition includes websites where product pre-orders and other “rewards” are provided in exchange for funds, while the narrow definition refers to the exchange of equity for funds, and is regulated by the Securities and Exchange Commission. I encourage using either type of crowdfunding. Both methods are valuable for simultaneously test marketing and raising funds. More information can be found here.