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Understanding Patents

CONTENTS 14pg 64K 7fig
1. Introduction
2. Development consultants vs patent attorneys
3. Search patents before developing
4. Inventors vs developers
5. Patents as a source of information
6. Patent It Yourself Book
7. The three types of patents
8. The intellectual property big picture
9. Should you get a patent or just produce?
10. Selling your idea to a larger corporation?
11. Can you get a patent after disclosure?
12. How long is a patent valid for?
13. When to get a patent
14. First to patent or invent?
15. Provisional patents
16. Should you get a US or other patent?
17. Cost of a patent search
18. Cost to get a patent
19. Writing your own patent
20. Using a patent attorney
21. Patent searching
22. Europe's network of patent databases
23. US Patent Trademark Office
24. Canadian Patent Office
25. Services such as Patscan
26. Reading the patent
27. Reading the patent first page
28. Reading the patent drawings
29. Reading the patent field and background
30. Reading the patent summary
31. Reading the patent description
32. Reading the patent claims
33. Patentability
34. Infringement
35. Coverage
36. Legal disclaimer
37. References
38. Revision history
39. Copyright

2023Mar05 by Ben Wiens...energy scientist

    Most books on intellectual property are written by intellectual property legal professionals. "Understanding Patents" is written from the perspective of a development consultant. I have been developing new products for over 30 years and have been involved in several patent applications. As an outsider to the patent legal system, I have things to say about patents that patent attorneys don't usually say about their own field. But don't use this article as a final basis for making important patent decisions. It is meant to give a cursory and alternate viewpoint of the world of patents.
    The main patent example used is the Ballard fuel cell patent US5,176,966 which was granted as a result of research that I was largely responsible for while working there. The greater power density that was possible with this design was needed for the first prototype fuel cell powered bus. This was the patent that myself and Danny Epp received the European Invention Award for in 2010. See homepage for more details.

Fig 1 Patent drawings

Fig 1 In this Ballard patent the seals were changed which allowed a higher power density

    The game of patenting is highly complex, expensive, and can be quite frustrating especially for small companies or independent inventors. Many independent inventors should not write up their own patent application. Patent attorneys however are expensive, and because of time limitations and legal constraints, cannot hold the hands of inventors through the complex process of invention. Development consultants such as myself however are intermediaries that often can aid inventors to perfect their inventions, do initial patent searches, research current products, and help inventors when dealing with the patent attorney. It appears that patent attorneys can not legally get involved with suggesting improvements to the invention. Development consultants on the other hand can and are often named as co-inventors of the invention. Some consultants sign over the patent rights as part of the agreement of pay for service, while others negotiate to be more involved in the business and become part owners. Ideally such agreements should be established before the development goes ahead.

    Many inventors spend years developing their ideas. They think they have a brand new idea because they haven't seen their invention in a store. Then they find a patent attorney in the hope of getting a patent. A patent search is done and often the idea has already been patented, produced, or disclosed. All their work has been largely a waste of time.
    It is always a good idea to do a patent and product search before pursuing development of an idea. First of all there are many good ideas found in the patents. Secondly it prevents inventors and designers from wasting their time if the idea has already been patented. Professional developers are constantly scanning the patent databases for new patents. This saves them from reinventing the wheel. The new ideas they come up with are built onto the current knowledge base.

    Patents are granted to an inventor, or a group of inventors, but not to companies. Most patents however end up being assigned over to companies. Traditionally we think of the inventor as being a slightly eccentric and crazy thinker who's mind is constantly buzzing with new ideas. Most successful inventions however are dreamed up and perfected in development departments of companies. Such company inventors generally proceed with their inventing in a much more sophisticated way. They often know what competing products are on the market already. Some companies have full time patent engineers and lawyers on staff. These people already have hundreds or even thousands of competing patents on file. They have a good knowledge of what products the company has already developed and which new patents they could get by weaving through all the competing inventions.

    Many people think of patents as a way to protect the ideas of an inventor. The original reason why governments agreed to allow inventors to protect their rights was because it would also make more information available to the public. Looking at ideas in old patents will generally save a lot of time and money. This is because there are a lot of ideas in the patents.

    The book "Patent It Yourself" is a wealth of information about all aspects of US Patents and patenting, and relates quite well to patenting in other countries as well. This book has been revised many times so check which is the lastest edition. Before going too far with your invention, buy this book. I used this book to write my first US patent, I was able to get 50 times more coverage than a local patent attorney said was possible, and I was granted the patent with no office actions. But this required a lot of reading and work which not all inventors are able to do. Even so, I would consider this book a must for inventors that use a patent attorney. The first time I had a meeting with a patent attorney for a client's invention, the patent attorney refused us because I asked too many questions.

    There are actually three types of patents. Utility patents are the main type usually considered and cover such things as Velcro, new drugs, and automatic transmissions. Design patents cover the ornamental or visible shape of an object. Plant patents cover plant strains such as flowers and vegetables.

    Patents are only one form of Intellectual property that is covered by law. Intellectual property law has many subcategories which include patents, trademarks, copyrights, trade secrets, and unfair competition laws. Patents deal with mental concepts or creations. Trademarks deal with symbols used in marketing goods or services. Copyrights protect the works of authors, composers, programmers, and artists. Trade secrets protect the private knowledge that gives a company a competitive business advantage. The Unfair competition laws deal with other forms of intellectual property that do not fall into the previous categories.

    Many products that are produced are not protected by any patents. In many cases such a product has already been patented in the past and the patent has expired. This means that any company can produce this product. Many small manufacturing companies also feel that the cost of getting and maintaining a patent for their product is not worthwhile. Once the company starts producing their product without a patent, anyone else can of course copy their design. Once the product has been disclosed to the public in this way, generally no one else can obtain a valid patent either. Sometimes there are problems with this approach. For example the product that you are producing presently may not contain all the ideas that were thought up. A competitor could obtain a patent for these improvements and prevent you from making them in the future. A patent can cover a greater range of ideas than disclosing your product. Of course a manufacturer could disclose the new ideas through publishing them in some way. This is of course not usually done. A patent discloses the new ideas with protection, while publishing without protection is like handing over all your designs for a product to the competition.
    In the United States, the first person to invent a new product has the rights to the patent. In most other countries the first to patent a new product has the rights to the patent. In the US, if a product is produced without patent protection, a competitor may try and obtain a patent during the first year that the new product is disclosed, claiming they were the inventor. In the US, the original inventor could take the issue to court, but this costs a lot of money.
    A patent does not give automatic protection from competitors. A patent gives the owner of the patent the right to produce the product as long as it does not in turn infringe any existing patent, and also gives this owner the right to prevent other companies from producing the product. Such rights however are covered only by civil law. This means that the patent owner may have to take the competing company to court to stop them from producing the product. Such lawsuits can be very expensive. It is not uncommon for such a lawsuit to cost US$250,000. Small companies do not have this amount of money to take their competitors to court and so often don't bother to get the patents to begin with. If small companies have a patent, about the only thing they may be able to afford is to hire a lawyer to send out a nasty letter in the hopes that the competitor will stop.
    Patents can be expensive to obtain, to maintain and to protect. There should be definite prospects for the inventor to make some money from obtaining the patent.

    Many inventors believe they could sell their inventions to a large corporation and make a lot of money. This in fact does not happen very often, but it is not impossible. If an inventor wants to sell an idea for a new product, a patent is usually necessary. This is because most companies will not look at new ideas using a non-disclosure document. If they signed such a document they would surely face a lawsuit from the inventor if their own development department ever came up with even a remotely similar idea.

    For US patents there is a one year rule. You must file your patent application or Provisional patent application within one year of the date that you first publish, commercially use, sell, or offer your invention for sale. This applies to inventors in any country that apply for a US patent. If you wish to preserve your foreign rights and prevent theft of your invention, file your patent application before you publish or sell your invention.

    US utility and plant patents filed before Jun1995 are valid for 17 years from the date of acceptance and patents filed after this date are valid for 20 years from the date of filing. Design patents are valid for 14 years. Most other countries also have the 20 year rule for utility and plant patents. During this period of time the patent owner has exclusive rights to use the patent. An inventor can sell or transfer the patent rights to another person or company or allow other companies to produce products under royalty. In some countries the patent owner may be required to allow other manufacturers to use the invention under royalty in certain conditions. If maintenance fees are not paid, the patent will also expire. When searching patents to see if your invention will infringe, remember to check the maintenance status.

    Many inventors think they should apply for a patent soon after they think up a good idea for a new product. This is often a mistake. The most ideal time to get a patent, if one only considers getting the most perfect patent, is generally after a lot of research and development has been done on the idea. Patents have very specific claims describing the invention. Most ideas change considerably during the process of development.
    In actual practice there are other considerations. If there are a lot of competitors working on the same idea, an early filing may be better. Often money needs to be raised and it is better to get an early patent application so the potential shareholders can study the patent details. At other times it is unclear whether a patent will be granted. Companies want to have a valid patent in their possession before plunging into financial arrangements. In the US an inventor can logically hold off longer before patenting than in other countries because of the first to invent vs first to patent rulings.

    In the United States, the first person to invent used to have the rights to patent. In most other countries including Canada, it is the first person to patent the idea that has the rights to the invention. Eventually the United States, switched to a first-inventor-to-file (FITF) system on March 16, 2013
    The US Patent office also had a disclosure program. Inventors could periodically mail sketches and descriptions of their inventions to the patent office, where they are dated and filed as evidence. The Disclosure Document Program was eliminated effective February 1, 2007. Many inventors have heard they should document their invention and then mail it back to themselves, then leave the envelope unopened. It is believed that the postmark date will verify the date of the invention. It appears that the law regards such a post office method as practically worthless and definitely inferior to having your documents dated and signed by a witness.
    It is important that the true inventors are named on a patent. Sometimes companies who apply for patents on behalf of their employees conveniently forget some of the true inventors. This is especially true if these inventors were consultants that are no longer working on the project. It appears that these unnamed inventors could legally have the patent invalidated.

    A provisional patent application is a short version of a US patent application which can be used to establish a year early filing date for a regular patent application. The fee for this provisional patent is quite low. Patent attorneys do not favor applying for the provisional patent in most cases. They have valid reasons for this objection, however there are benefits in using the provisional patent for the more educated inventor.
    Patent attorneys feel that it is often wiser to proceed with the regular patent application instead of using the provisional patent. I can imagine what is going through a patent attorney's mind when they hear the word provisional. They probably start making a mental checklist of all the things that are often missed in such an application--the patent search--comparing claims--opinion of patentability--no examination. A quick and dirty provisional patent application can give many people a false hope. For a patent attorney to properly check into an invention and prepare the provisional patent application costs quite a bit of money. In the end it is often better to apply for the regular patent. Changes can also be made to a regular patent application in the first year after filing. So the purpose of the provisional patent is basically to save money.
    Provisional patents are more of an advantage for well educated inventors. Such inventors would have done several patent searches, compared claims, and checked the competition carefully before writing up their own provisional patent. The educated inventor would also know how to properly describe and draw up the application. Such educated inventors often don't have the skills to write up the regular patent application, but have enough knowledge to write up the provisional patent. In these cases the provisional patent can be a cheap way of getting early patent protection. It allows a manufacturer one year of protection to assess the invention's commercial potential. Patent pending can be used. It enables immediate commercial promotion.
    According to "Patent it Yourself", there is one large downside to the provisional patent. One can wait up to a year after filing a regular US patent application before filing for foreign patents. Usually it is known within a year whether the US patent will be granted. This is good, because who wants to incur the expense of filing for an expensive group of foreign patents if the US patent application will not be granted. When a provisional patent is used, there is no one year grace period to file for the foreign patents. The decision to file for foreign patents must be made one year after filing for the provisional patent.

    The US patent is a very sought after patent. This is because getting a US patent often gives companies the biggest bang for the buck especially if the US is one of their target countries. Some companies that sell internationally only apply for the US patent. They hope that if other competitors are prevented from selling an identical product in the US, they might decide not to manufacture the product at all.
    In Canada, few Canadians apply for a Canadian patent before the US Patent. This is partly because it takes many years to obtain a Canadian patent after filing an application whereas it usually takes less than a year to get a US patent. Getting a patent approved in less than a year is desirable if foreign patents are going to be applied for. Application for other foreign patents must be made within a year after a US patent application is filed. Even so there may be some advantages in Canadians filing for a Canadian patent first.
    Often foreign patents are applied for in a package deal that covers most major industrialized countries. The cost to obtain such a package and the maintenance fees are extremely expensive.

    I would suggest 11 typical steps in the total process of inventing and then obtaining a patent. (1) think up basic idea (2) do an Internet patent search (3) research the idea through library, Internet and businesses involved in the subject area (4) use services of a development consultant if this is not your main profession (5) do more complex computer patent search (6) develop the rough idea (7) do a formal patentability and infringement patent search through patent attorney or agent (8) review patentability and infringement issues with the patent attorney and development consultant (9) use development consultant to suggest new twists to invention to weave through claims (10) proceed with final development based on patent issues (11) write up the patent yourself or use a patent attorney together with development consultant to write up entire patent application or check claims.

    It is legal to write up and apply for your own patent in certain cases. For example Canadian's or American's can write up and apply for a US patent. The cost of the patent will be as little as the fees in the country that is being applied in which are far less that the total fees if making an application through a patent attorney.
    When a patent attorney is used, the fees are considerably higher. Count on paying a minimum of US$8000 plus about US$1500 for the patent search. The fees paid to the attorney often include the drawings that need to be done.

    It is often hard for novices to understand what is being claimed in an existing patent. It is even harder to understand what needs to be claimed when writing a patent. I only recommended that you write your own patent if you are thoroughly familiar with the process.
    Use the steps in Chapter 17 to work through the invention and patenting process. When you get to writing the patent, the most complicated part will be crafting the claims. The difficult thing in a patent is to reduce an idea into tangible words. The claims at the end of a patent form a logical legal definition of the idea. These claims are almost like a sexless family tree where there is a type of grandperson claim who had children claims who in turn had other children claims. These claims can also be related to each other like relatives such as uncles, aunts and cousins.
    For many inventors, doing the patent drawings poses a formidable challenge. There are certain drawing standards that the patent office has which can be obtained from their website. Though it not required, most patents have many isometric drawings. This is type of 3 dimensional projection drawings that makes it easier to visualize the parts real shape. Unfortunately this type of drawing is hard for many inventors to do. Modern solid modeling computer programs can easily create these type of drawings. Development consultants in mechanical fields often have this type of computer program. Patent attorneys use services of draftsmen that are familiar with doing patent drawings.

    There is no legal reason for patents to be hard to understand. Plain language can be used. Many Patent attorneys are however used to a tradition of legalese. Often the more familiar a patent attorney is with the subject of the patent, the clearer will be the patent.
    Patent attorneys often find it difficult to fully understand a complex invention. It may not be exactly their field of expertise. They feel compelled to keep their fees reasonable, and so only have about 40 hours at most to complete an entire patent application.
    It is up to the inventor to properly disclose the invention to the patent attorney as well as check whether the patent wording sounds reasonable. On one patent, I made suggestions for five rewrites and in the last rewrite spent a whole afternoon with the patent attorney, going over paragraph after paragraph of wording and making major changes. Patent attorneys are not usually very happy when this happens. If they quote on the patent application, their fee structure simply doesn't cover major changes such as this. There is however no point in filing an imperfect patent. If you need to make changes, try and limit the corrections to essentials and not just what sounds best to you. Be professional and use your time with them in an efficient manner. Otherwise you could have a pretty cranky patent attorney on your hands.

    Twenty years ago, patent searches were almost always done through patent attorneys. This made them expensive and so were generally put off till the time of the patent application. This type of search could be classed as the manual patent search. In this type of patent search, the patent attorney hires the services of a company that has agents, patent attorneys, or lay searchers working in the central patent office such as the US Patent Office. For this price, the searchers will spend at most a half day looking through patents and other related literature. They generally only provide the five patents closest to the new invention. The patent attorney looks through these patents, compares them to the new invention and writes up an opinion of whether the new invention is patentable. This type of patent search costs a minimum of about US$1500. Such a search is generally only done for the purpose of determining patentability. They are not often done for finding information, determining whether the invention will infringe on a current patent, or how to improve the coverage of the invention. The patent attorneys usually feel it is only their job to determine if they could write up a valid patent for their client.
    The manual patent search is expensive but it is the most reliable method of checking whether an invention has been patented or disclosed to the public before somewhere in the world. Presently there is a lot of patent information on computer databases, but none of them go back to the very first patent. Only the physical patent records in the central patent offices do.
    Even though this search is expensive, it is not as thorough a search as is done in the regular patent application. It is true that searchers try and check previous domestic and foreign patents as well as product literature in the search, but they have a limited time to search all the records. But even the regular patent application does not involve a total search of all foreign patents and all technical literature sources.
    Even twenty years ago there were some alternatives to doing the manual patent search through the patent attorney. It was possible for people to travel to the central patent office themselves and do the search. Especially in the US, there are many patent depositories that receive all patents that the patent office issues. They are however only filed by patent number and not by category and so searching is difficult. There is an advantage of using such a depository as opposed to just sending for the patent copies through the mail. Patents have previous related patents cited. In the library one can find a first patent, then check 5 new references which in turn yields 5 new references each. This can all be done in one day as opposed to repeatedly sending for patents through the mail.
    Twenty years ago a preliminary search was often conducted by looking through abstracts in books and on microfilm. By looking through these, one could find similar patents and send to the patent office for copies of the full patent. It could take weeks of looking through such abstracts to come up with a useful list.
    In the last two decades, patent abstracts have been put into computer databases. More recently the full text and images of the more recent patents have been put into computer databases as well. At first these databases were expensive commercial ones with stiff fees for accessing them. A person could pay to have a search done on the database for about 20% of a manual patent search. Such a search is still superior to many searches on the Internet because these commercial databases have more extensive information about patents than the Internet type.
    Just a few years ago, recent patents have been put on the Internet. Many major patent offices now have many years of full-text and images of patents available for free on the Internet.
    In spite of being able to download many years of patents for free on the Internet, many patent attorneys and other professionals still order paper copies from the patent offices. It takes a long time to download each file and print it out. Copies of older patents still need to be ordered.
    It is usually best to use all three searching methods at different times when developing a new product. For example it is often necessary to obtain copies of about 50 to 200 patents during the course of finding information, checking patentability, infringement, and coverage. Most of these patents should have been obtained long before seeing the patent attorney for the first time. The search through the patent attorney should really be the final check to determine patentability.

    The espacenet is Europe's network of patent databases. It has free US full-text and images of patents available in high quality Adobe Acrobat format. Of course there are also European and World patents available.

    The US Patent Office website has free full-text and image patents from 1976 to present. The full-text of the entire patent is searchable. Patents are available in TIFF format which requires that you install a special compressed TIFF viewer on your Internet browser.

    The Canadian patent office has free Canadian full-text and images of patents in high quality Adobe Acrobat format.

    Patscan is a fee-based patent and trademark search service of Patex in the Vancouver BC Canada area. Before the days of free Internet patent databases, services such as Patscan were the only way the general public had to receive information from online patent databases. Even a few years ago, the commercial patent databases that Patscan used such as DIALOG, ORBIT, and STN referenced patents fifty years back, while the Internet databases only went back 20 years.
    There are still reasons for Patscan or similar services to exist. Inventors may not be computer literate, and those that are, may not be very familiar with the various aspects of searching. Patscan does not use just one, but many patent databases. In this business, knowing where to look is worth quite a lot. The total bill for an average patent search at Patex is less than a manual patent search. If doing such a search prevents one unnecessary manual patent search, it is worth the money. Busy professionals should use the Patscan type of service to do the first patent search before the start of development. Inventors who are knowledgeable with Internet patent searching should use the Patscan type of service to double check their search. Only one day of wasted effort can already justify paying for such a search.
    The Patex site has lots of links to other patent information. Though it is located in the Vancouver area, Patex has clients worldwide.

    Patents are all written in a certain uniform format and order. Unfortunately there is no Introduction in a patent that tells you how to read them. Understanding the format of a patent is something that is learned over time. Some patents are very difficult to understand because they are written in legalese, while others are written in more plain English. It depends on the writing style that a particular patent attorney chooses. The major sections in a US patent are (1) First page composed of the Particulars and Abstract (2) Drawings (3) Background (4) Summary (5) Description (6) Claims.
    Many people new to the field of patents think that all the detailed descriptions in the patent document represent what is being legally claimed. This is not true. It is only the claims at the end of the document that do. The Abstract summarizes the patent. The Drawings of course help to visualize and identify the components. The Background of the Invention serves to introduce the subject material and compare it to other products in the field. The Summary describes the claims in more readable language. The detailed Description of drawings explains the components of the invention. None of these form the Claims which are located at the end of the patent document.
    There is however a legal reason for the descriptions. They are in effect a disclosure of parts of the invention that cannot be claimed. They prevent other people from trying to patent these ideas in the future. If the patent needs to be modified before final acceptance, having the ideas disclosed makes it possible to modify the patent without having to apply for a totally new one.

    The first page of a US patent, as shown in Fig 2, contains Particulars about the patent and the Abstract. At the very top of the page is the country, patent number and date of the patent. On the left hand side are details such as the patent title, inventors and which company the patent is assigned to. There is also information about which class the patent is filed in and the major patents that the invention is an improvement on. On the right hand column there is the Abstract which summarizes the patent.

Fig 2 Patent first page

Fig 2 Patent first page

    It is not required that a patent has drawings but most do. Especially on older patents, the legalese wording is very hard to understand. In these cases looking at the drawings is the only route to understanding the patent.
    Patent drawings are hard to follow however. This is because of the patent office ruling that only numbers and not words be used on the drawings themselves. This is understandable as words would needlessly clutter up the drawings. This means however that each item number must be found somewhere in the patent Description. The numbers are not referenced in any order and can be spread out over many columns of text.

Fig 3 Patent drawings

Fig 3 Patent drawings

    The Field and Background do not describe much of the new invention. Mostly this section is a list of previous ideas. It is full of words such as disadvantages, conventional, did not function well. Sometimes there will even be references to previous patents and the problems they had. Much of the wording is aimed at identifying problems with the previous ideas.

Fig 4 Patent field and background

Fig 4 Patent field and background

    While the patent background talks about problems with previous ideas, the summary describes the general concepts of the new invention. Compare the summary to the claims. It will soon become evident that while the claims are legalese descriptions of the invention, the summary uses more descriptive language to expand on the claims.

Fig 5 Patent summary

Fig 5 Patent summary

    Don't use this section to try and understand how an invention works. This section is generally refered to as the Detailed description of the drawings and it is just that. Use it to understand what all the parts shown in the drawings are for.

Fig 6 Patent description

Fig 6 Patent description

    As was already mentioned, only the claims form the legal rights of the patent. The rest of the patent is largely a preamble to the claims. Unless you have studied the framework of how the claims work, it is very hard to understand what is being claimed.
    The patent claims are numbered and usually vary from one to about fifty. The claims are written in a sort of hierarchy structure. There is usually a first main claim, then additional claims that are based on the first or other claims. This is really the part of the patent that is the hardest to write for the layman. To understand the claims it is often best to make a flow chart of the claims. Make little rectangular boxes with some words and the number of each claim. Use lines to link in which way each claim is dependant on the previous claims.

Fig 7 Patent claims

Fig 7 Patent claims

    There are three main legal issues involved with patents. These are patentability, infringement and coverage. Usually Patent attorneys only focus on whether a new idea is patentable. If they do a patent search, it will also focus on whether the idea is patentable.
    Whether a new idea is patentable is related to two things. The invention must be novel and not obvious. The invention must be different than what is already known to the public and not obvious to someone skilled in the technology of the invention. If the patent office knows that the invention has been patented before in any country in the world, it can not be patented again. If the patent office knows that the invention has been produced or written about anywhere in the world, it can not be patented again.
    There are generally four stages in proving whether a new idea is patentable. The first stage should generally involve doing an informal patent search. More current patents can be searched on the Internet as well as using computer search services such as Patscan. This will give a person a rough idea of how many patents are similar to the invention. The patents you find may also give a person some ideas in perfecting your invention.
    The second stage usually involves going to a patent attorney to do a formal patent search. The patent attorney hires an agent in the patent office to do a search. Searchers try and check previous domestic and foreign patents as well as product literature in the search. After the patent search is done, the patent attorney will give an opinion of whether the invention could likely be patented.
    The third stage generally involves using a patent attorney to write up and file a patent application with the patent office. At the patent office, a patent examiner does a much more thorough check of the previous inventions and product literature. If the invention appears to be novel and not obvious, then a patent is granted.
    Of course a previous patent or document may be found after a person has received a patent. Someone could apply to have the patent invalidated. For example it is not uncommon for extensive worldwide patent searches to find similar inventions that were missed in the US patent application. The US patent office does not have the means to check out every patent, publication, catalogue and product that was ever produced in the whole world. So the fourth stage of determining final patentability is to let the marketplace determine whether the patent is really valid. The word patentable for patenting purposes however relates only to whether you can have the patent application accepted initially.

    As already stated, patent attorneys generally only focus on whether a new product idea is patentable. After a patent search is done, they will usually provide you with an opinion of whether the idea is patentable. You could obtain a patent, but later find that you could not sell the invention because you would be infringing on an in-force patent in a country you were selling in. If your patent is based on improvements of other ideas previously patented but which are still in-force, you will be infringing on this previous patent by selling your product in a country of the patent rights. Your patent does not infringe, rather it is the act of selling to the public in a country that causes the infringement.
    If you are infringing, the owner of the patent you are infringing on can take you to court. If they win, you would not only have to pay royalties or damages during the period you were infringing, but also the entire court costs. You could also choose to settle out of court.
    To find out whether your invention would be infringing on an in-force patent usually requires payment of additional fees to the patent attorney when doing the patent search. It is best to ask for an opinion of infringement before the first formal patent search. The attorney will have to ask the patent agent to search for patentability as well as infringement.

    Patent attorneys feel it is primarily their job to obtain a valid patent for their clients so they primarily focus on patentability. They often ignore the aspects of whether the patent will infringe because they think this involves different business arrangements that manufactures can make. They try to give the patent adequate coverage, but don't always accomplish this aim.
    Patent coverage has to do with how wide a net the patent can cast. For example if your patent has claims which cover only part of what you have invented, another inventor could then obtain a patent for these improvements in the future. In the US you could take this future inventor to court and claim you invented it first. In other countries however, the first to patent has the rights. Either way, no one needs future complications if they can be avoided in the original patent application.
    Patent attorneys like to think they take the issue of coverage seriously. It is in a sense their credibility that is at state. People hire patent attorneys so their idea will be properly covered. The widest coverage possible doesn't always happen for several reasons.
    One mistake many inventors make is assuming that the patent attorney will know the extent of the invention. Many inventors will go to a patent attorney with a prototype of their invention. The patent attorney thinks this is the extent of the invention. The inventor may have thought of ten other variations but they only think the latest idea that works is important. Patent attorneys don't often grill the inventor too much about the extent of their invention for several reasons. First they are not supposed to help the inventor with their invention. Secondly they may not be totally skilled in the subject material of the invention. Thirdly they usually feel the pressure from clients to keep the cost of the patent low and so limit the time they spend in understanding each invention.
    In some cases however, patent attorneys actually block inventors from including ideas in a patent application. This occurred when I was involved in one patent application. I was hired as a development consultant to aid in a part of the patent application. After attending a meeting with the client and the patent attorney, I realized that the patent application likely was only covering a small part of the invention. I telephoned the patent attorney later. At first he agreed with me that the omissions should be included in the application to provide the proper coverage. Later, in some bizarre twist, both the patent attorney and the client's lawyer became extremely defensive and told me in no uncertain terms that they did not want the omitted ideas in the patent application. They felt it would delay the application a few days. I think that the patent attorney became afraid that this patent application would suddenly take a lot more time than he had quoted on. I agree that situations such as this are complicated. There is no end to claims that could be ultimately added to the invention. In this case however I felt that the omissions left the patent wide open to future inventions from competitors. To properly cover their invention they would have had to file another patent quickly, but this was not done. To avoid situations like this, inventors should educate themselves so that they can properly present their invention to the patent attorney.
    It is difficult for a patent to cover all variations of an invention. A patent can only cover one basic idea with some variations. For example an inventor may have ten related ideas which have one basic theme. But in reality these ten ideas would need to be covered in ten different patents. Because patents are expensive, generally only the best of these ten ideas is patented. Even within this best idea, only the most promising variations are covered in the claims. This leads to some problems down the road. It is often found during development that the other less promising variations are in fact the better ideas.

    Do not base important decisions only on this article. The information contained in it is intended on giving an introduction to the field of patents only.

Pressman, David Patent It Yourself, Nolo Press, Berkeley, California, USA

1999Apr20 First printing.
1999May30 Added to first Chapter.
1999May31 Corrected Patscan link.
2000Jan31 Completely rewrote article.
2000Mar01 Changed terminology from regular patent search to manual patent search.
2000Oct17 Changed IBM to Delphion
2001Mar29 Changed Chapter 2 and 22.
2007Dec28 Updated a few items and chapters
2012Apr29 Changed information about book "Patent it Yourself"
2013Dec07 Changed Chapter 14 to first to file

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Ben Wiens Energy Science Inc. Metro Vancouver BC Canada