Provisional or Non-Provisional Application

Drawings are the foundation of any patent application, whether it is a provisional or non provisional application. Therefore, it is imperative to abide by the guidelines of the United States Patent and Trademark Office (USPTO) to ensure that the drawings are clear and the patent passes examination.

To understanding the differences between the two drawing approaches, we first need to know what provisional and non-provisional patent applications are.

Provisional patent application basics:

• Provisional patent applications require a low USPTO filing fee and are less expensive than the regular non provisional patent applications.
• Provisional patent applications last only for 12 months. You still have to file a non provisional patent application within 12 months of your provisional application in order to retain the advantage of the provisional’s filing date. This is just like filing an extension on your tax return; you still need to pay the taxes and file real tax returns.
• Claims are not required for a provisional patent application.
• Provisional applications are not examined. A follow on non provisional goes to the back of the examination line. So if you are racing against time and want your patent issued quickly, a provisional application is not ideal.

To be successful, any provisional application must include thorough details of the invention, just as in a non provisional application.

Non provisional patent application basics:

• A non provisional application establishes the filing date of your patent application and begins the examination process by the USPTO.
• Non provisional applications are comprised of a specification (description and claims), an oath or declaration, a drawing (when necessary), and a fee.

Patent illustration drawings are critical and can determine the success of any patent application. Therefore, it is important that all drawings are in accordance with USPTO rules.

By law, all patent applicants are required to provide a drawing of the invention if it increases the understanding of the invention. Exceptions may include for matter compositions or processes where drawings are irrelevant for comprehension.

Rembrandts in the Attic: Utilizing University Patents To Create Entrepreneurship and Jobs

In the FY2011 budget announcement last week, the Obama Administration proposed a program to bring to market some of the over one million patents held by Universities and Colleges. Called IMPACT- Innovation Model Program For Accelerating The Commercialization of Technologies- a vast majority of these one million patents are driven by $50 billion in Federal research dollars. Only a limited number of start ups (estimated at 550 in 2007) are spun off from this treasure trove of Intellectual Property. Recognizing this vast challenge and opportunity, the Administration and University of Southern California Provost Krisztina “Z” Holly proposes an ambitious new project.

The goal of the program is to stimulate innovation, create jobs and utilize these great assets held by our universities and colleges. These intellectual property assets are federally funded to the tune of easily over $50 billion per year.

In 2008 the Association of University Technology Managers (AUTM) estimated there were 3,388 federally funded research startups, and the impact of these startups is estimated by researchers at over $33.5 billion. The reality is that the potential is far larger. Universities traditionally either license the technology to established companies or it gets to market through faculty consulting, students going to industry themselves or on a smaller scale – University based startups. A large amount of IP sits on the proverbial shelf.

There are many programs created by universities and organizations like The Indus Entrepreneur (TiE) that help bring the Technology Transfer Offices closer to the entrepreneurs. But entrepreneurs are traditionally very wary of approaching universities and licensing issues. This program recognizes the difficulty of taking raw research and commercializing it.

The project calls for ten beta sites to get $2 million in funding a year for five years. These beta sites would nurture a culture of entrepreneurship through three key components:

• Gap funding: University research is typically early stage and translating these breakthrough works into commercial ventures is difficult. These grants would enable entrepreneurs or researchers to develop into a venture that has some “societal” impact. University based start-ups are traditionally not developed, as the Technology Transfer Offices (TTOs) are typically small and lack the reach and resources to reach and develop entrepreneurs. A typical TTO typically loses money as inventions can take up to ten years to generate royalty. The focus of TTOs is typically on larger licensing deals that generate revenue and rightly so.
• Community Building: In order for startups to succeed, they need an eco-system. We all know of the eco-systems in Silicon Valley in California or the Route 128 in Boston, MA or locally the I-270 Bio Tech corridor in Rockville, MD. These eco-systems have a local community that can enable these startups to succeed. From the ability to get out and build bridges with local entrepreneurs, businesses, talented engineers and marketers to Venture Capital firms, banks and prospective customers, this community building is key.
• Mentoring and Education: Young and first time entrepreneurs need a lot of education and strong mentoring. We have many great examples of companies that succeeded as a result of this including Dell, HP, RIM among others. Successful companies require talented teams who are nurtured and supported. Recognizing this need and addressing this early on will pay dividends. Addressing education through peer learning is critical as well. As a member of EO Network – www.eonetowrk.org, I can personally attest to how important peer learning and experience sharing can be.

Hiring Patent Illustrators and Project Managers? Test for Drawing Ability

You wouldn’t hire a pilot without ensuring he or she know how to fly a plane would you?

How can a hard working patent illustration company better serve its clients and their clients? It can sometimes come down to hiring people with that inborn ability to quickly and accurately visualize the most complex shape, and put it down on paper (or these days on a computer screen) without relying on the crutch of technology.

People often mistake the ability to use drawing and drafting software for the ability to draw, but they are two quite different things; the computer is, as the saying goes, ‘just a tool’ like a pencil or ruler. The real process takes place in the mind of the artist.

For this reason, the best illustration companies will actively test candidates for drawing ability early in the hiring process. Such a test can be as simple as asking for a 10 minute hand sketch of a common consumer item such as a telephone or watch. Does the sketch reveal good perspective? Does it show good proportion? Was it done quickly? These are the clues to look for, clues (among others) to future success as a patent illustrator. And, of course, it helps to give the same test to all candidates systematically, making it easier to compare the results.

Read more information on Patent Illustration

The Basics of a Design Patent and Design Patent Searches

Design patents are based on the ornamental aspects of surface decoration, aesthetic configuration, appearance and shape of an item. In contrast to a utility patent, a design patent is issued for aesthetic features for a new or an improved outward appearance; however, the subject claimed in the design patent should have some practical utility.

To be eligible for a design patent, the subject must satisfy the ornamental standards and be novel. When viewed through the eyes of an imaginary designer skilled in the art, the design must be non-obvious compared to any previously available design. Also, a design patent cannot be obtained for ornamental configurations that are not visible when the product is in use.

The prior art search for a design patent requires a close look at the ornamental aspects in any existing designs similar to the new design attempting to be patented. In essence, it is a visual search through volumes of classification binders at the USPTO. Due to the fact that design patents have minimal words defining the aspects of the design, a prior art search mainly involves design class codes and only broad keywords gathered after the typical USPTO design patent claim of “The ornamental design for…”

It is possible to obtain a design patent as well as a utility patent for the same invention if each patent type fulfills the respective patent standards. In such cases separate utility and design searches have to be performed.

An object with a design that is substantially similar to the design claimed in a valid design patent cannot be made, used, sold, copied or imported into the United States. A substantially similar copy is liable for patent infringement. In the case of a conflict, to detect infringement, evaluation of a patented design compared to an accused design involves satisfying the “Ordinary Observer” test, which was introduced by the United States Supreme Court case Gorham Co. v. White, 81 U.S. 511 (1871).

According to Gorham’s “Ordinary observer” test, there is infringement “if in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.”

This “ordinary observer” test is similar to the trademark infringement conditions i.e. whether there is a “likelihood of confusion.” The patented and accused designs in the case of Gorham Co. v. White were both silverware handle designs. The attempts of the defendant, White, to establish the dissimilarity between the two designs was eventually ignored

Originating with Litton Systems, Inc. v. Whirlpool Corporation, 728 F.2D1423 (1984), the Federal Circuit added to Gorham’s “ordinary observer” test a second test i.e. “point of novelty” test required to deal with design patent infringement suits. i.e. the accused device contains ‘substantially the same points of novelty as the patented design that differentiated the patented design from the prior art’.

On September 22, 2008, the Court of Appeals for the Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. Dkt. No. 2006-1562) added conditions to the “ordinary observer” test established by the Supreme Court in 1871. The Federal Circuit provided guidance that will likely benefit design patent plaintiffs. Egyptian Goddess suit alleged that Swisa had infringed its U.S. Design Patent No. 467,389 that claims a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides.

However, Swisa’s product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on each of its four sides.

The Federal Circuit observed that the difference of buffer surfaces in three sides in the design patent and buffer surfaces in all four sides in the Swisa buffers cannot be considered minor.

Much to the relief of many practitioners, the Federal Circuit found it difficult to implement the “point of novelty” test to a design patent because of the fact that it is difficult to provide a detailed verbal description of the claimed design. The Federal Circuit giving the decision for non-infringement unanimously held that the “ordinary observer” test was the sole test to determine design patent infringement, with the limitation that the ordinary observer is one with knowledge of the prior art. The ordinary observer test requires one to look for substantial similarity between the patented design and the accused design; but familiarity with the prior art is needed if the observer is to meaningfully compare the accused devices to the patented claim to evaluate the differences from previous designs.

See the Legal Advantage’s Sample Patent Designs and get a free Quote for your requried Design Services from the list below

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What is a Patentability Search? Why do we need it?

It is imperative for someone who seeks patent protection to understand the scope of the invention to be patented, whether it is new or known, whether it has some economical benefit in comparison to the available arts. It is essential to conduct a search that includes all the below categories to get a feel of whether the invention is novel and can be patented before proceeding to file a patent.

What can be considered prior art?

• United States patents and published applications
• Foreign patents and published applications
• Articles and Journals
• Company websites
• Other web sources
• Product brochures
• News
• Magazines
• Books
• Traditional knowledge
• A discussion in a public chat room between two individuals
• Whatever is available to public

A prior art search can save both money and time that you would otherwise spend in the filing process for a patent. In other words a prior art search saves an applicant from the pains of rejections by the patent office. It may also help you to forecast your success or obstacles before you enter the work.

You can change the destiny of your patent application! How?

Our broad prior art search provides you enough information that would absolutely help you to vigilantly design the set of your patent claims, thus making the claims tougher with better chances of getting the invention granted. Not only this but also our well informative reports help saving your valuable time in understanding the scope of the available prior art.

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Details about Freedom to Operate Searches

A Freedom to operate (FTO) search is also known as ‘Freedom to practice’ (FTP) or ‘Product clearance’ search. As the name suggests, a freedom to operate search is conducted to evaluate the viability of commercialization of your product or process in a particular country or geographical region without violating others’ intellectual property rights.

Legal obstacles for your product could be valid patents, designs and (or) trademark rights. However, any other IP rights based on a particular jurisdiction (country or region) should not be overlooked. No system exists that can provide IP protection for one invention throughout the world with a single legal action, so Intellectual property rights are limited to particular jurisdictions (countries or regions) where the national laws differ from place to place.

Before thinking of commercializing a product or a process in a particular country, it is vital to verify the patent rights which cover the technological aspects of the product or process as well as the designs and trademarks associated.

Claims are the portion of the patent that defines the scope of the invention or protection. Often the patent claims are understood by considering the specifications including the drawings and the interpretation of patent claims requires considerable skills and experience.

If you wish to commercialize your intellectual property in another country where there is a patent that claim’s the same elements of your product or process, there are a number of options for you to verify and adopt your patent.

• Term of issued patent: An issued utility patent remains active for 20 years from the date of filing (consider the patent term adjustments made that increases the patent life beyond 20 years period). Claims in an expired patent are in the public domain and your product is free to operate based on those features. Design patents stay live for 14 years from date of issue.
• Maintenance of issued patent: An issued utility patent may get expired before the 20 years period unless the maintenance fees are paid in time. In USPTO it is 3.5years, 7.5 years and 11.5 years from the date of the original patent grant. No maintenance fee is required for design patents.
• Pending Applications: A pending application could be an obstacle as it has a chance to be converted into a patent. However, a close look at the prosecution of the application is required as the claims of an application may get changed to a great extent when it is issued compared to the published claims. Also there are chances that the application may get rejected by the patent office or abandoned or withdrawn by the applicant.
• Multiple patents: Your product or process could be infringing multiple patents. Even some features of your product or process do not infringe any valid patent claims, other features could be infringing. So it is necessary to check all the steps in your process or the components in your product to make sure they are free to be used.
• Get the patent license i.e. purchase the patent: Make an agreement with the patent owner to use the patented technology or protected invention for the specific claim elements, in specific markets and for a specific period of time. Based on the potential of the patent and the type of agreement made, the patent owner may deal for a one-time settlement or for a periodic royalty payment or both.
• Cross-licensing: If you have a patent that partly covers your product or process features, but some other features are covered by another’s patent, make an agreement with the other patent owner to grant a license to each other where both the parties can make use of the claimed components of one another.
• Patent pools: This is an agreement among patent owners to cross-license a set of their patents to one another or to third parties, by which two or more entities working on interrelated technical domains can establish a pool of patent rights that any of them can use.
• Design around: You may design around the patents that create obstacles. This could be possible by advancing your research or amending the product or process features to evade infringing others patents.

Our solid experience in freedom to operate and infringement search and analysis with the world leading databases and tools provide us an advantage to prepare a well informative report that gives a clear idea of whether your product or process is likely to infringe any active patents and (or) trademarks. We provide the status of the patents that helps you calculate the potential of the threats and the opportunities.

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Patent Illustration Tips: Surface Shading for Design and Utility Patents

Accurate representation of an object’s form is critical to the success of a design patent, and in many cases utility patents use shading as a tool to ease the examiner’s readability of a figure. Proper shading is critical for success of the patent as the creation of a realistic form will eliminate potential doubt in an examiners mind, as well as solidify the claims for future embodiments. There are a number of shading styles available for the patent illustrator to take advantage of, and there are situations where one may be more beneficial than another. Choosing the style of shading depends on the shape of the patent in question, and in some cases, shading styles are used to identify surface materials and textures.

Check out our examples of shading techniques

Standard line shading is the common approach to surface shading, and there a number of variations of this style. This patent illustration style is preferred because is easily illustrates the precise geometry of a figure. Being able to show the solid line edge of a surface, next to perpendicular shading will allow you to understand the shape of that corner. Standard line shading is the preferred style for the majority of patent illustrations, especially the patents that have simpler forms and more of a geometric aesthetic. Line shading can be used to show transparent surfaces as seen in example F and G as well reflective surfaces as in example E.

Stipple shading is an alternative patent drawing technique, where the illustration uses varying densities of dots to demonstrate the figures form. In example C you can see how the use of stipple shading with varying density creates the rounded face needed for this figure. Patents that are of a more complex and organic nature may benefit from stipple shading, as there may not be easily define hard edges for a line. But if the design patent in question has a mixture of organic and geometric features, and hybrid stipple and line approach may be used to define the form, as seen by the technique used in example D. .

The average patent draftsmen will import your CAD or PDF files and create the figures from isometric vantage points, throw labels on, and send it back for you to review. They will add in some lines to help show a curve, or an angled surface, but they usually will not have the artistic skills to apply alternative shading techniques to a design patent. In some cases it may take longer, and require more skill to draft a stippled figure, but the ability for an examiner to understand a complex form and clearly identify aligning aspects of multiple views will leave the patent seeker with less office actions.