| 1. What is a patent? |
|
A patent for an invention is the grant of a property right to the inventor, issued by the patent office of the country granting the patent, generally for a period of 20 years from the date on which the application for the patent was filed. The right conferred by the patent grant is to exclude others from making, using, offering for sale, or selling the invention in the country where the invention is patented, or importing a product made by use of that invention into the country where the invention was patented. |
| |
| 2. How can I prevent others from stealing my invention? |
|
| An invention can be protected by filing a patent application for it, or by maintaining it as a trade secret, if in fact the inventive concept can be maintained as a trade secret. |
|
| 3. How do I know my invention is new? |
|
| A prior art search has to be conducted to determine if the invention is new. |
|
| 4. Is software patentable? |
|
| Software like any other innovative entity is patentable in many countries provided it meets the requirements for patentability. |
|
| 5. They say abstract ideas and mental processes cannot be patented, then how is software patentable? |
|
Software can be considered as a virtual machine, a set of code capable of performing the same function as and replacing an electronic/electrical circuitry. It is the machine, process or function employing the code that is patententable. |
|
| 6. What are copyrights? |
|
A copyright protects the form of expression of an original artistic or literary work that has been tangibly expressed, but it does not protect the idea or inventive concept. Some examples of products that may be copyrighted are: poems, stories, books, paintings, maps, building plans and even software. |
|
| 7. To what extent can a copyright protect software? |
|
Copyright law protects a software code as an original work of authorship. It allows the copyright owner to prevent others from directly copying the source code. However, copyright protection cannot assure complete protection in terms of preventing other entities from using the functional aspects of software. Also, it provides no security if a similar code is proved to have been independently developed whereas patents provide an impregnable protection for software codes. Once a patent right has been granted to the owner of a software, it not only grants the patent holder the sole right of excluding others from making, using, or selling the patented invention but it also gives the patent holder the right to prevent others from creating software that perform similar functions. |
|
|
| 8. Why should software be patented when the code can be protected by copyright? |
|
While the software code can be protected by copyright, a competitor can still reproduce the program in another software language with a different code. Copyright only protects the form of expression, but not the idea or the inventive concept. A patent protects the idea or inventive concept. |
|
| 9. Where can I find information on software patents? |
|
The Software Patent Institute (SPI) promotes software patents and provides related information about software patents. SPI is supported by the United States Patent and Trademark Office which also assists it in providing information and technical support to the public in the form of educational and training programs and providing access to information and retrieval resources concerning software prior art. |
|
| 10. Are the patent systems of other countries the same as our country? |
|
| The patent system is governed by the intellectual properties law of a country and differs from country to country. |
|
| 11. What is open source software? |
|
Open source software is a software code available for free access by all. Open source software unlike patented software can be copied, edited, redistributed and be incorporated in a program by any programmer. |
|
| 12. What is patent valuation? |
|
| Patent valuation or evaluation of a patent or patent portfolio means determining the fair market value of a patented products. |
|
| 13. Why is it important to evaluate the value of a patent? |
|
Patents can contribute up to approximately 2/3 the valuation of a high technology company. This valuation increases the evaluation of a company and can also be used by a company as collateral to obtain funding. Market valuation of a patent also assists the patent owner to estimate the commercial feasibility of the product and assists him to plan and market his product more effectively. |
|
| 14. How is the value of a patent calculated? |
|
There are various statistical methods to calculate the market value of a patent. IP Procure has designed its own proprietary method of patent valuation. |
|
| 15. At what stage of product development should a patent be filed? |
|
The sooner the better. The patent application may be filed at the implementation stage of the product. A provisional application may be filed before a non-provisional (or regular) patent application, at the conceptualization stage of the invention. |
|
| 16. What are the risks involved in public disclosure of the invention? |
|
In most countries including Europe and Japan, the inventor loses the right to file a patent application if the invention is disclosed to the public before the patent application is filed. The safest route for an inventor is to withhold commercialization or public disclosure of the invention until patent pending status is granted to the invention. United States and Canada are two notable exceptions where an inventor can obtain a patent after the inventive concept becomes public knowledge provided a patent application for the inventive concept is filed within 1 year of such disclosure. |
|
| 17. What is a provisional application? What is the term of this application? |
|
Under United States patent laws, an idea may also be protected by filing a provisional application. A regular (i.e. non-provisional) patent application must be filed within one year of the filing of the provisional application, failing which the applicant looses the claim to file a patent application. For industry design and trademarks, the non-provisional must be filed within 6 months of the date of filing of the provisional application. |
|
| 18. Is patent protection obtained in a country valid in another country? |
|
| No. A patent granted by a country is good only for that country. For example, a patent granted by the USPTO will protect the patented invention only in the United States of America. To protect the same invention in any other country, for example, India, another patent application has to be filed in the Indian Patent Office. |
|
| 19. What are the criteria for patenting a product in foreign countries? |
|
Since patenting an invention in each foreign country is an expensive proposition, a foreign patent should be taken out only in the country in which a market for that product exists or where a market can be created. An invention should also be patented in a foreign country if that country has the know-how and capability to manufacture that patented product and thereafter to market the patented product in other foreign countries.
An international patent application can be filed under the Patent Cooperation Treaty (PCT). The PCT has over 125 contracting member states in which the patent can be filed to protect the invention. Filing a PCT application reserves the priority right for the applicant in all the contracting states. |
|
| 20. Who has the right to claim a patent: the “first to invent” or “first to file”? |
|
In almost every country of the world except the US, the patent is granted to the entity that files the patent application first. |
|
| 21. What is the difference between a trademark and a service mark? |
|
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of goods of one party from those of others.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The word “trademark” or “mark” refer to both trademarks and service marks. |
|
| 22. Can a patent application be filed for a prophetic invention, i.e., for an invention based only on an idea that has not been tried, tested, perfected, prototyped, or reduced to practice? |
|
Yes, a patent application can be filed for a prophetic invention provided the application discloses “how to make and use” the invention in compliance with 35 USC 112. An invention comprises an inventive concept + a reduction to practice. The Courts have held that filing a patent application that shows how to make and use the invention, even if the invention has not been tried, tested, perfected, prototyped or reduced to practice, is the equivalent of a reduction to practice.
To obtain a patent an applicant only needs to show utility, novelty and enablement of what you claim as your workable invention. However, if the claims, on their face, are impossible or unworkable, the claims will be rejected. |
|
| 23. In a patent application, what are the 3 classes or categories that may be claimed? |
|
| Claims may be filed for structure (i.e, the elements that comprise the product); for a method of using the claimed invention; and for the use of the claimed invention. |
|
| 24. When filing a patent application, should an applicant opt to not having the patent application published after 18 months? |
|
| If the patent application is to be filed only in the US, the client may opt for non-publication of the application using USPTO form SB/35. |
|
| 25. How can you track your application at the USPTO? |
|
| Applications that have not been published may only be viewed on Private PAIR. First, fill out form PTO/SB/125A and fax to USPTO Electronic Business Center (EBC) at 866-217-9197 to obtain a Customer Number associated with the application number (to view application on-line). EBC will then send you a Customer Number. Then obtain a Digital Certificate. The process is explained on www.USPTO.gov/EBC/digitalcert.HTM.
To track information in published patents: www.uspto.gov -> under Patents click on Status &IFW-> Enter in application no without slash -> Image File Wrapper |
|
| 26. What are the pros and cons of protecting intellectual property by a trade secret vs. a patent? |
|
There are several routes that may be taken to protect intellectual property (IP).
The downside of a trade secret is two fold: first the trade secret may be reverse engineered. However, if the market for a product is small, a potential competitor will likely not invest the resources to reverse engineer the product. Second, if the product is publicly disclosed (for example, manufactured, sold, or offered for sale) and the product is also maintained as a trade secret for more than 1 year, it cannot be patented.
A downside of a patent application is that after 18 months the patent application is published |
