Insights & News

IP Appeal, Vol. 2 No. 1, Winter 2014
Eureka! Now What? (Summary Of A Typical Patent Procedure)

March 13, 2014
Client Alert

Eureka! Now What? (Summary Of A Typical Patent Procedure)
Trademark Scams

Eureka! Now What? (Summary Of A Typical Patent Procedure)

You may have heard that the greatest invention of the 19th century was the process of invention. Let’s consider that process as it relates to patents in the 21st century. The process begins, of course, when an inventor conceives a new invention and triumphantly yells, “Eureka!” But what happens, or should happen, next?

Outlined below are seven steps that follow conception of an invention in a typical, sophisticated procedure by which patent support is provided during product development – including some general cost and time estimates to conduct the work. None of these steps is mandatory, but each is recommended for various reasons. You may omit one or more of the steps for business or other reasons. Moreover, the estimated costs and time frames can be adjusted to meet your needs.

  1. Document It: After conceiving an invention, the inventor should immediately document that conception in an Invention Disclosure Statement (IDS). A blank IDS form should be available to anyone who might conceive an invention. (Stradley can provide a suitable form at no charge.) It is important to memorialize the initial product concept in a written IDS for at least two reasons: (a) The document is evidence proving a date of invention, especially useful in a case of derivation; and (b) the document facilitates communication both with decision-makers working with the inventor and with outside patent counsel.

  2. Go or No: Typically, someone or some group (i.e., the decision-makers) must decide whether the product concept memorialized in the IDS is one that the inventor’s company would like to pursue. The group is typically called a “patent committee” and includes patent attorneys, scientists, engineers, business managers and product managers. The group has three main functions: gather invention concepts from employees (preferably through an IDS), file new patent applications for the most promising concepts, and maintain active patents by paying the regular fees (or terminate the patents by not paying those fees).

  3. Patent Collection Search: A patent collection search (or “state of the art” search) is conducted. The patent references uncovered by such a search are useful as guides for those people working on the development of the new product. The claims of the unexpired, issued patents highlight sensitive areas to be avoided as product development continues. The disclosures of the patent references (whether expired or not) provide both information that may prove useful to the development team (the U.S. Constitution defines the very purpose of federal patent protection as “To promote the Progress of ... useful Arts” achieved, in part, by disseminating ideas) and a backdrop against which patentability of the new product can be assessed as development continues. We estimate a cost of $3,000-$4,000 to complete an initial collection search, which can be done within one week after the time you authorize the search.

  4. Combined Patentability and Noninfringement Search: We strongly recommend that full patentability and right-to-use studies and analyses be conducted once development of the new product is complete and the product design is final. Such studies would be directed specifically to the final design and, hopefully, would uncover any relevant patents that might issue between the time of the collection search and the time just before product commercialization. We often proceed with a right-to-use study, a patentability study or both once a design has been finalized for commercial purposes. Such studies enable us to provide our opinion on the likelihood that the commercial design might infringe the claim of another’s patent and on the patentability of the final concept. The studies are premature, of course, until the product design is substantially complete. With this recommendation in mind, the fourth step of the typical patent-support procedure is to conduct a combined patentability and noninfringement search directed to the final design. We estimate a cost of $3,000-$5,000 to complete the combined search, which can be done within two weeks following the time you authorize the search.

  5. Noninfringement Opinion: A formal, written noninfringement (or “right to use”) opinion is prepared. Such an opinion memorializes the conclusion of noninfringement reached based upon analysis of the search results, provides evidence of the company’s due diligence, and constitutes persuasive evidence against a later charge of willful patent infringement likely to be made by a patent owner asserting infringement (which, if the charge were successful, could result in enhanced damages). We estimate a cost of $5,000-$10,000 to complete the written opinion, which can be done within one month after the time you authorize the opinion.

  6. Patentability Opinion: A patentability opinion is prepared and delivered (orally or in writing). We estimate a cost of $2,000-$3,000 to complete a written patentability opinion, which can be done within two weeks following the time you authorize the opinion.

  7. Patent Application: Finally, assuming a favorable patentability opinion, the last step is to prepare and file a patent application with the U.S. Patent and Trademark Office. We estimate a cost of $8,000-$10,000 to prepare and file a patent application, which can be done within one month after the time you authorize the application.

Trademark Scams
Many clients have reported receiving correspondence from private companies claiming to be domain registrars and reporting that a third party is attempting to register a domain comprising the client’s trademark. These notices frequently originate in China or elsewhere in Asia and claim that the purported infringing registration can be stopped by paying a fee to register the domain yourself. These notices are scams. Do not respond.

Internet registrars are under no obligation to inform trademark owners that a third party is seeking to purchase a domain comprising a registered trademark. Investigation usually reveals that the third party identified in the correspondence does not actually exist. The company sending the notice is usually a domain registrar trying to trick you into buying domains that you otherwise do not need but feel compelled to buy to prevent the fictional third party from “stealing” your domain name or trademark. Of course, should you wish to consider acquiring any domain name, this is a separate decision to be made independent of the subject solicitation.

The company sending the notice is usually a domain name squatter testing your interest in the domain name that includes your company name. Experience shows that a reply to the email tells the domain squatter that you are interested in the domain name, prompting them immediately to have the domain name registered in the name of another company. The domain name squatter would then act as a middleman offering to sell you the domain name. This scheme has become a business model for such domain name squatters. If you are really interested in the domain name, we recommend that you proceed directly to register it through normal channels.

The posting of information on this website, or the receipt of information by viewers of this website, is not intended to – and does not – create an attorney-client relationship. This website is not intended to provide legal advice, and visitors to this website should refrain from acting on information posted here without seeking specific legal advice from individually qualified counsel.

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