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Can You Add Another Person to Your Patent Application?

“If I filed for a provisional patent as the sole inventor, is it possible to add another inventor when filing for the nonprovisional patent if he makes a contribution to the invention?”

You may add additional inventors to your non-provisional application.  The non-provisional must have at least one inventor in common with the provisional patent application.

It is important to understand, however, that the inventors listed must correspond to the subject matter stated in the patent claims, not the patent specification.  An inventor is someone who contributed to the conception of a patent claim.  Patent claims are not required provisional patent application, but they are required in the non-provisional… so you must carefully assess who may or may not be listed as an inventor in the non-provisional patent application.

In addition, if you are adding an inventor because the inventor contributed additional subject matter after the provisional patent filing – you must be careful.  Adding new subject matter in the patent claims that was not covered in the provisional may cause the patent examiner to decline your priority claim to the provisional application.  This is because the provisional patent application must at least anticipate the subject matter claimed in the non-provisional application.

As such, you must file a non-provisional patent application with the same subject matter as the provisional and then, you must file a continuation-in-part application to cover the new subject matter not covered by the provisional.  This will enable you to preserve your priority claim to the provisional – else, you risk losing your claim!

I would strongly advise that you retain a licensed attorney for the non-provisional filing.  I have not met an inventor who has obtained enforceable and defensible patent protection without the support of a licensed patent attorney.  There is a high risk of abandoning your patent rights to the public domain.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can I Convert a US Provisional Patent Application to an International Patent Application?

A US provisional application must be filed in the US or any foreign country within 12 months of its filing date to benefit from the priority date established by the provisional application.  As such, the provisional patent application provides the patent applicant with 12 months to decide in which countries a patent application should be filed (US or other jurisdictions).

However, in that same 12 month window, the patent applicant may choose to convert the US Provisional to an international, patent cooperation treaty (PCT) patent application.  Here is how the process generally works for PCT applicants:

  1. PCT Application is filed (by 12 month filing deadline)
  2. PCT Examination Results received (6-8 Months from PCT filing)
  3. Select Which PCT member states in which you would like your PCT application recognized (within 30 months)
  4. Report your PCT Application and Examination Results to the member state (US/EPO/CA/CN/JP/RU/etc).

As such, filing a PCT application essentially takes that 12 month US deadline and turns it into a 30 month extension (18 additional months) for all 148 PCT member states.  It is important to properly draft US provisional patent applications in anticipation to an international conversion.  Consult a licensed patent attorney for this process.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Another Invention Does Something Similar to Mine – What Should I Do?

There are other inventions that do the same thing or provide the same result as my invention, but my invention does it differently. Is my invention still patentable?

Rarely do patents protect a RESULT and the RESULT is seldom patentable for most field of inventions without also claiming the functional elements used to obtain the result (e.g., electro-mechanical inventions). Rather, patents more often protect the functional components/systems/processes that are used to obtain a desired RESULT, however common the result.

Can the functional elements that are used to achieve the result in your invention (albeit a common result) be distinguished from the elements of a previously patented invention that may be used to obtain the same result? If so, then there may be a patentable distinction between your invention and the patented invention.

The next question we should ask is whether your functional elements are a mere obvious variation of the patented invention? If not, then we move to the second stage of the analysis: is there any prior art that discloses the same/similar functional elements but for the purposes of obtaining a different result or utility in a different field of use?

If so, we may run into the legal issue of “obviousness” – would it have been “obvious to one of ordinary skill in the field of your invention” to take the functional elements from one field of use and apply it to another field of use? Or, could you argue that there was a step of ‘inventiveness’ that was required to create your system.. for instance, was it necessary to modify the elements of your invention in order to obtain the desired result in the different field of use?

TL;DR:

1. Same result, but different functional elements may be patentable IF:
2. Functional Elements have not been previously combined to obtain desired result; or

a) Functional Elements have not been previously combined in the current field of invention, and
b) Inventive modifications were necessary to obtain desired result in the current field.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Public Disclosure – What Happens If Someone Files for a Patent Before You Do?

If an inventor disclosed his/her invention to his partners/university/employer, probably had some form of public disclosure, but did not have a provisional patent – what happens if a person with a similar invention had a provisional patent filed which could come after the first inventor’s disclosure? Which inventor gets the patent?

The inventor entitled to a patent would be the first inventor to file a patent application. This is known as the First-Inventor-to-File patent system that the US adopted in March of 2013. The only way that the earlier inventor can restore his/her patent priority to the invention in this scenario is if the earlier inventor can prove that the first-filing inventor derived the invention from the earlier inventor’s public disclosure.

If this cannot be proven, there are a couple other avenues. First, we must consider what kind of patent application that the first-filing inventor may have filed. A provisional patent is NEVER disclosed by the USPTO to the public. They are kept confidential. Provisional applications also don’t undergo patent examination. Once the first-filing inventor converts the provisional patent application to a non-provisional utility patent, then patent examination begins. At the 18-month mark of patent examination, the USPTO will (with some exceptions) publish the utility patent application for public inspection.

Now, once the application is available to the public, earlier-inventors may submit evidence to the patent examiner of prior public disclosure (also known as prior-art). This evidence would be considered by the patent examiner and may be used to prevent the first-filing inventor from obtaining any patent rights. This however, does not entitle the earlier-inventor to any rights themselves.

The best thing for the earlier inventor to do in this scenario to preserve their own rights with (for example, a provisional patent application) within 12 months of the public disclosure. Then, when the first-filing inventor’s patent application publishes, the earlier inventor may attempt to oppose the first-filers application by proving that the first-filer derived the invention from the earlier inventor’s public disclosure. Having successful opposed the first-filers application, the earlier inventor’s patent application now takes the spot for patent priority!

This process is complicated and this is why it is important to have at least a provisional patent application on file before any public disclosures are made!

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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How Is Licensed IP from a University Affected During an Acquisition

If a startup company uses an exclusive licensed IP from a university, what usually happens if the company wants to get acquired by a larger company? Do large companies usually avoid acquiring a company with a licensed patent?

The question can be answered whether or not you have an exclusive license to the IP from a University, an Individual, or an Entity. We must first visit the terms of that license agreement to determine whether the agreement includes a Successors & Assigns clause. This clause states that if either party is acquired, the acquiring party is subject to the agreement just as if it were the original party to the agreement. It means that if someone were to acquire the licensor (e.g., the entity granting the license), then that acquiring entity would be required to honor the terms of the license. Similarly, it means that if someone were to acquire the licensee (e.g., you in this case), that the acquiring entity would be entitled to the same terms of the license.

In some instances, the Licensor writes in the agreement that the terms of the license should be renegotiated upon an acquisition of either the Licensor or the Licensee.

The next thing we should consider are the actually terms of the license and what it would mean to the entity acquiring inheriting the licensing agreement. If the entity subject to the license highly relies on the license agreement, then the acquiring entity will carefully scrutinize the terms.

For instance, when does the license expire? What happens when the license expires? Will the licensor be willing to renew the license to the acquiring entity? Are there any conflicts of interests between the licensor and the acquiring entity (do they want to do business with each other)? Will the licensee be able to provide his/her products/services without such license? Is it possible to design proprietary products/services to circumvent the license? How much of the company’s value/worth is associated with/relies on having the license? Can the acquiring party get such license themselves and thereby eliminate the need for your company altogether (exclusive licenses prevent this)?

In general, even large companies have many license agreements they are bound to themselves. They acknowledge that this is a normal part of business. However, if your company will collapse if such license agreement is not in place then it may be harder to be acquired.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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The 2 Most Common Rejections of a Patent Application

Several months after your patent application has passed preliminary examination, the process of substantive examination will begin. During substantive patent examination, a patent examiner is assigned to review your application. The patent examiner will, among many other actions, assess your patent claims and perform a patent search based on your claims.

If the Examiner finds prior art (previous patents, applications, or publications) that is relevant to your claimed invention, he may issue one of two rejections: 1) a rejection indicating that your claimed invention is not novel in view of the prior art (this is known as a 35 USC 102 rejection); and/or 2) a rejection indicating that your claimed invention is obvious (non-inventive) in view of the prior art (this is known as a 35 USC 103 rejection).

The 102 rejection indicates that the Examiner found your entire claimed invention in a single reference. The 103 rejection indicates that the Examiner had to combine one or more references together in order to derive your claimed invention.

You should carefully review the references to ensure that the Examiner has both a proper understanding of your claimed invention, as well as a proper understanding of the cited reference. If you find room for disagreement, you may traverse (or argue) the Examiners rejections. In many instances, you are entitled to hold a telephonic interview with the Examiner. You’ll find the Examiner’s phone number on the last few pages of the rejection documents (or Office Action) sent from the Examiner.

Patent Examiner’s prefer that you fax or email them with an Agenda for the interview prior to scheduling the interview. The agenda’s do not need to be detailed, but the more detail you provide the Examiner with up-front, the better feedback you will receive from the Examiner.

It is not recommend that an applicant/inventor submit any official response to the Examiner in writing. Rather, any materials provided to the Examiner for the interview should clearly be marked “FOR INTERVIEW PURPOSES ONLY”, so that they do not get entered into the official record. The most common mistake inventors make is that they argue how their invention differs from the prior art cited against their patent claims. Instead, you should either argue how your CLAIMED invention (as described in the claims) differs from the prior art, or amend your claims so that they distinguish your invention from the prior art.

Conducting this interview is a good first step in assessing the status of your matter, but it is always recommended that you speak with a licensed patent attorney prior to proceeding with any formal response to the USPTO. Remember, anything you write in the formal response Can and Will be used to limit your patent rights! Even obvious characterizations can be construed to limit the scope of your patent rights!

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Nest Patent – Occupancy Pattern Detection, Estimation and Prediction

OCCUPANCY PATTERN DETECTION, ESTIMATION AND PREDICTION

 

Inventors:FADELL; Anthony Michael(Portola Valley, CA) ; ROGERS; Matthew Lee(Los Gatos, CA) ; ROGERS; Kipp Avery(Chicago, IL) ; ISHIHARA; Abraham K.(Palo Alto, CA) ; BEN-MENAHEM; Shahar(Mountain View, CA) ; SHARAN; Rangoli(Sunnyvale, CA)

 

Applicant:
NameCityStateCountryType

NEST LABS, INC.
Palo AltoCAUS
Assignee:NEST LABS, INC.
Palo Alto
CA
Family ID:45807659
Appl. No.:14/322724
Filed:July 2, 2014

 

Overview

 

This patent application discloses systems and methods for predicting and/or detecting occupancy of an enclosure, such as a dwelling or other building. Using an occupancy prediction engine in conjunction with data received from at least occupancy sensor installed in a dwelling, the present invention is able to perform a number of applications.

For example, applications that can benefit from accurate occupancy prediction include heating, ventilating and air conditioning (HVAC), lighting management, hot water heating and management, security, emergency response, and the management and charging of rechargeable batteries (e.g. for electric vehicles).

In general, applications that greatly benefit from occupancy prediction are those that particularly benefit from knowing or accurately estimating, in advance, when the structure will be occupied. The lead-time of the prediction will especially aid applications that have an inherent lag-time to reach a certain state. For example, heating and cooling a structure to an acceptable level has an associated lag time of several minutes to more than one hour.

Therefore it is beneficial to accurately predict ahead of time, when an occupant or occupants will be entering and/or leaving structure. Additionally, energy savings can be obtained due to predicting and/or detecting occupancy for both short term, such as intraday periods and long term, such as multi-day vacation periods, when the structure can remain unconditioned or more economically conditioned.

What is Claimed to be the Invention

 

Note: this application is still pending, and the scope of the patent protection granted, if any, may change during patent examination.

A system for predicting occupancy of an enclosure comprising:

  1. a model of occupancy patterns based in part on information regarding the enclosure and/or the expected occupants of the enclosure;
  2. a sensor configured to detect occupancy within the enclosure; and
  3. an occupancy predictor configured to predict future occupancy of the enclosure based at least in part on the model and the occupancy detected by the sensor.

A method for predicting occupancy of an enclosure comprising:

receiving a model of occupancy patterns based in part on information regarding the enclosure and/or the expected occupants of the enclosure;

receiving occupancy data from a sensor configured to detect occupancy within the enclosure, the occupancy data being indicative of the occupancy detected by the sensor; and

predicting, by a computing device, future occupancy of the enclosure based at least in part on the model and the occupancy data.

 

How it Works

 

The systems can include a prior (a priori) stochastic model of human occupancy, thermal comfort and activity patterns, based in part on information pertaining to the type, dimensions, layout and/or the expected average number of occupants of the structure (whether a home or other type of structure) and on the calendar (time of year, day of week, time of day), and also based on prevailing and forecast local weather conditions.

Such a stochastic model can have multiple parameters, which can be initially estimated from a questionnaire filled by residents and/or from accumulated statistical data for structures of type and usage, and occupant characteristics (i.e. according to household type) similar to the structure in question.

Over time, the parameters of the a priori stochastic occupancy, comfort, activity model, can be further trained using cumulative logs of sensor data acquired within the actual structure in question. For example, if the a priori model predicts the absence of occupants on Wednesdays during daytime, but occupancy sensors sense human presence on Wednesdays consistently for several weeks, the a priori behavior model can be corrected for this information.

As used herein the term “sensor” refers generally to a device or system that measures and/or registers a substance, physical phenomenon and/or physical quantity. The sensor may convert a measurement into a signal, which can be interpreted by an observer, instrument and/or system. A sensor can be implemented as a special purpose device and/or can be implemented as software running on a general-purpose computer system.

Known methods for electronic occupancy detection include acoustical detection and optical detection (including infrared light, visible, laser and radar technology). Motion detectors can process motion-sensor data, or employ cameras connected to a computer which stores and manages captured images to be viewed and analyzed later or viewed over a computer network. Examples of motion detection and sensing applications are (a) detection of unauthorized entry, (b) detection of cessation of occupancy of an area to extinguish lighting and (c) detection of a moving object which triggers a camera to record subsequent events. A motion sensor/detector is thus important for electronic security systems, as well as preventing the wasteful illumination of unoccupied space.

The occupancy prediction can be used in the actuation and/or control of an HVAC system for the enclosure or various other applications such as: home automation, home security, lighting control, and/or the charging of rechargeable batteries.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Importing a Product to the US Market without Infringing Patent Rights

Foreign companies often ask me what their first step to bringing a product to the US market should entail on the legal end. My answer is simple: make sure that your product would not infringe the intellectual property rights of others. When it comes to marketing and branding, a trademark search may suffice. When it comes to patents, however, there is a bit more digging that needs to be done.

A US patent holder has the right to ban the import of infringing products into the US for a period of 20 years. We must first perform a US patent search and to assess the state of the market in the US. From the search, we must identify the patents that are similar to your product. It is important to determine three things before importing a product that may be patented in the US:

  1. What exactly is patented?
    • Although they may appear technical in nature, Patents are complex legal documents. Every representation made in the patent document, the file history, and the examination record serves to define the scope of patent protection to which the patent holder may be entitled. A full analysis is necessary to determine what patent rights a patent holder has.
  2. Is the patent valid?
    • Patent laws often change and patents that were granted in the past often becoming invalidated due to new patent laws. Moreover, the patent holder must properly maintain his patent rights. Failure to do so will cause his patent rights to expire. We must make sure that the patent has been properly maintained. Lastly, a state-of-the art search may be performed to determine if any prior inventions may in fact have been publically available before the patent holder obtained his patent rights. These prior inventions may invalidate the patent holder’s rights.
  3. If the patent is valid, does importing our product “infringe” or “violate” the patent holders rights?
    • We must compare your product to the patented product, line-by-line, to determine if your product overlaps the scope of protection granted to the patent holder. There is much room for interpretation, so a careful assessment is necessary.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Patent Expiration – Should You Reapply on Your Provisional?

I have not started manufacturing and my provisional patent application has expired. Should I re-apply for a provisional patent or apply for a full utility patent?

Once a provisional patent application has expired, you may refile the same provisional application on condition that you have not publicly disclosed the subject matter of the application more than a year prior to the second filing.

Once you make a second provisional patent filing, you should then ‘convert’ your second filed provisional to a utility application within a year from your public disclosure date. Alternatively, you may file the utility application immediately (without filing a second provisional), as long as you are public disclosure date was less than a year prior.

If you are outside of the 1-year period of public disclosure, you have forfeited your patent rights to the subject matter that was publicly disclosed. See What is a public disclosure? Improvements you’ve made since the public disclosure may still be patentable, so long that the improvements haven’t also been publicly disclosed more than a year prior.

Note: Although you are permitted to file a US utility patent application within 1 year of the subject matter’s public disclosure date, most other countries in the world will not grant you patent rights if you’ve publicly disclosed the subject matter prior to a patent filing in at least one nation.

If no public disclosure has been made on the invention, you may keep refiling provisional applications upon expiration, as long as you see fit. However, when you decide to convert the provisional to a utility patent, you may only claim the patent priority date of the latest filed provisional. The earlier provisional filing dates will no longer be considered priority date eligible.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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If You Develop an App with Someone Else, Who Owns the Patent & Copyright Rights?

Jack and Jill work at ACME. Jack is the owner of ACME who partnered with Jill to help develop some software. Jack and Jill never had a formal arrangement made in writing…

For various reasons, Jack and Jill are now ready to terminate their relationship. They each want to use the software that they built while working for ACME. So, they’ve compromised – Jack can use the software as a foundation for X while Jill can use the software as a foundation for Y. They now would like to know – What is the best legal arrangement for them?

First, we must determine who actually owns the software? ACME, Jack, Jill, or Jack and Jill? Since there are no documents detailing the terms by which Jack and Jill agreed to venture into jointly building the software for ACME, we can assume that ACME does not have any ownership of the software. It is now a question of ownership between Jack and Jill. For the sake of this example, Jack and Jill have conceded that they each own the software and the question of actual ownership is not an issue.

Accordingly, Jack and Jill are joint authors of the software which, if contains no patentable subject matter, is narrowly protected under copyright law. Joint authors each get 100% ownership of the entire work product. Likewise, joint-inventors for patentable software also each have 100% ownership for the entire work product.

As Joint Authors of the software, they each have 100% rights to the entire software. So, Jack can formally terminate his relationship with ACME and keep his rights to the software. Jill may do the same. In this scenario, Jack and Jill can compete with each other using the same software without any legal claims against each other.

However, since Jack and Jill don’t wish to create more conflict, Jack Inc. and Jill Inc. may then agree to their corresponding use of the software in a royalty free (optional) cross-licensing agreement. Jack would forbear his right to use the software in Jill’s field of business, while Jill would forbear her right to use the software in Jack’s field of business.

This agreement, however, would have a loophole. For example, if the software is not patented, Jack could simply recreate the cross-licensed software using different lines of code. We must remember, copyrights on software code are ‘narrow’ forms of IP protection – it does not protect the function of the software modules or interaction between the software modules. It simply protects the lines of code used to create them.

If Jack and Jill would like to prevent each other from circumventing their licensing agreement in the aforementioned scenario, their license agreement could have a clause prohibiting the use of derivative works without subsequent derivative work cross-licensing agreements. There are many favorable reasons for creating this scenario, as Jack and Jill may continue to cross-license any future derivatives of the software for each other’s mutual benefit (if they so desire).
If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Do I Need to Know How to Make My Idea in Order to Patent It?

I have an idea that I think is/could be patent-able based on the requirements of patent-ability, but I do not yet know exactly how to make it. For example, I want to add a certain useful feature to a shoe, but do not know the best way to add that feature because I do not work in the manufacturing of shoes.

I believe I have found a company that could develop a prototype for me, but I am worried who would own the idea if they are the one’s adding expertise and deciding the best way to add the feature.

Would a provisional patent with general language about the feature and it’s useful benefit be enough to protect this idea while working with a manufacturer to develop a prototype, or would a specific description of how the shoe with the new feature is made be necessary (which I would not know until after the prototype is developed)?

Provisional patents, in large part, are designed to help the inventor secure their patent priority date while they take their invention from a ‘concept’ to a reality. During this process, you will be interacting with many parties: investors, engineers, developers, manufacturers. All of these parties may be better funded and better equipped than you are to bring your idea to market. Having a provisional patent on file will help ensure that, if anyone is entitled to a patent on your  invention, it would be you. This protects you against potential misappropriation of your invention by the parties you engage in helping you bring your idea to market.

That being said, how much do you need to know about actually making your invention for a provisional patent? Well – at the provisional level, you should be able to describe your invention conceptually. You may not know all the tricks, but the requirement is that you describe your concept such that an engineer will be able to derive how to make your invention based on your description. So, as an example, you don’t need to know how to be a programmer to patent a software application – you just need to have an understanding of how the software application what the software application should be built to do.

As another example, you don’t need to be a shoe-maker to patent a new feature/design on a shoe. You just need to describe your concept sufficiently to enable a shoe-maker, when reading your patent description, to make your concept into a reality.

So, I would agree that filing a provisional patent application is very important – and, if you know enough about your invention to describe it to someone who has the means to build it, then you have enough information for a patent application filing.

I will also add that it’s important that you should have good agreements in place with the manufactures/engineers during your work with them in creating your invention. Even if you have a patent filing, you make sure that  these manufactures/engineers sign IP Assignment agreements. These agreements require the people you work with to transfer their IP rights to any contributions they may make to your patent-pending invention during their work for you.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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My New Invention Has Many Uses – Do I Need Multiple Patents? Part 3

You’ve decided that the best approach to protect your invention is by filing patents separately for all the different functions/uses and components. This approach, if affordable, provides numerous benefits (e.g., licensing benefits). Starting the filings out as provisional applications while the invention, as a whole, is still undergoing development or ‘proof-of-concept’ can be an affordable means to protecting the various aspects of your invention. If done properly, protections for needless public disclosures may be provided.

Do you want to keep some components a secret?

The subject matter of a provisional patent application is never disclosed to the public. This affords the inventor an opportunity to continue to improve the subject matter without sharing the disclosure to the public in its ‘patent-pending’ phase. It also prevents the subject matter from entering the public domain in case the inventor decides not to pursue a non-provisional patent on the subject matter.

Recommended Approach:

Break your idea up into components (if possible) and file them as provisional applications first. A full patent application (non-provisional) can claim priority to more than one provisional application. However, as soon as you claim priority to a provisional application, the provisional application becomes public record. If you want to keep different segments of your ideas from being disclosed, file them in separate provisional applications.

In this way, when you follow with a non-provisional, you can pick and choose which components are “ready” to become public record, and which ones can remain undisclosed protected ideas. Otherwise, if you put every aspect of your invention into a single provisional application, then the non-provisional that follows will render all of the components available to the public.

 

For the full story please visit Part 1 of this series.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

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My New Invention Has Many Uses – Do I Need Multiple Patents? Part 2

A single invention (for example – an automated cleaning robot) may have many different innovations (let’s call them ‘components’) making up the entire invention. Inventors often struggle to decide if separate patent application filings are necessary for each innovation. To assist you in deciding, answer the following questions.

1. Could the Components be used independently of the entire invention for a different invention?

If your innovative component can be used across many different platforms, then it is best to focus a single patent application on the component itself. In addition, a patent application on the invention as whole itself may be filed, incorporating by reference the patent application on the component.

In contrast, if your innovative cannot be used across many different platforms, then it’s best to file a patent application on the invention as a whole and detail the innovative component therein.

2. Is there novelty within the Component itself?

Of course, you would feel that your innovative component is ‘novel’ – but would it pass patent examination without the context of the invention as a whole? In order to pass patent examination, the component itself would need to be deemed by the examiner as: Useful, Novel, and Non-Obvious or Inventive.

If the component, independent of the invention as a whole, has a use on its own – it would meet the ‘useful’ requirement. If the component is the first of its kind (or an improved derivative of existing components), then it would meet the ‘novel’ requirement. If the component is more than just a combination of other existing components, then it would meet the ‘non-obvious’ and ‘inventive’ requirements.

For more information visit Part 3 of this series.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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My New Invention Has Many Uses – Do I Need Multiple Patents?

A single invention (for example – an automated robot) may have many different uses and functions. Inventors often struggle to decide if separate patent application filings are necessary for each use and function. To assist you in deciding, answer the following questions.

Does the single invention have different uses?

Generally, a patent application should only claim a single use of an invention. The first and foremost reason: If you are claiming multiple uses of the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single use and file separate patent applications for each other use.

The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.

Does the single invention perform different functions?

As with the ‘use’ analysis above, a patent application should only claim a single function of an invention. The first and foremost reason: If you are claiming multiple functions for the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single function and file separate patent applications for each other function.

The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.

 

For more information visit Part 2 of this series.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can Social Media Apps Get Process Patents?

I am creating a social media app. Do I have to patent the process of what the app does? To avoid copycat versions? Or do I have to launch and create a big network effect? I am not creating any new software or technology, but the way the process puzzles together is innovating.

Processes are patentable if they are innovative! Sometimes, the process of using the app is innovative – other times, the function of the app enabled by the process is innovative. Both instances are patentable, even if the hardware/software that facilities the processes is not innovative in itself. I strongly advise against making any launch until at least a provisional patent application is filed. Here is why:

  1. First Come, First Serve: The US patent system will only award a Patent on an idea or invention to the first inventor who files a patent application. If you aren’t the first to file, you risk losing your patent rights.
  2. The Clock is Ticking: If you don’t file a U.S. Patent Application within 12 months of public disclosure (such as sharing your idea with others) or within 12 months of offering your invention for sale to the public, you lose your patent rights. Even still, the longer you wait, the greater the risk of someone else filing a patent application for the idea you came up with first.
    • Important Note: Although the US gives you a 12 month “grace” period to file a patent application after your first public disclosure, most other countries in the world do not. This means, in those countries, you will have lost your patent rights if you’ve made a public disclosure before filing the U.S. patent application.
  3. Filing a Provisional Patent Is a Great Place To Start: It’s affordable and it’s an essential take away from these 3 facts. A provisional application secures your priority date (your spot in line) to the patent rights while you develop your idea, market it, and raise funding. This helps to ensure that no one will beat you the patent office. Our platform has made the provisional patenting process quick, easy, and affordable for thousands of entrepreneurs and businesses across the nation.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri