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If the patent department has established metrics to evaluate the performance of the patent docketing system, and the system is consistently meeting or exceeding the benchmark, then pat yourself on the back, because you rank higher among your peers. Each patent department is unique and the metrics that work for one department may not work for another. The objective is to help IP departments develop and measure their own metrics to determine whether their patent docketing software is meeting the goals. Client Satisfaction

Knowledge Management

Team Effectiveness

Visibility

How easy is it for your inventors to submit new invention disclosures?

How easy is it for your patent committee members to provide their recommendations on invention disclosures?

How easy is it for senior management in technology and R;D to view the overall patent portfolio and pipeline?

Knowledge Management

Do you have established metrics and rationale for evaluating invention disclosures for patent filings?

A number of patent departments use outside counsels for drafting, filing and prosecuting patent applications. The services provided by firm can account for 70% of the overall patent department budget. It is important to know if your existing patent docketing system can provide you metrics to measure their performance.

How much time do you spend coordinating these activities?

Patent docketing software is expected to help your team get more effective. How much time is your team spending on emails for sending information to inventors, patent committee members, outside counsels?

How much time are they spending on calculating patent award payments?

Patent Docketing Software - If It's Broken, Fix It!

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What is a patent?

A patent permits the owner of the patent to prevent anyone else from producing the product or using the process covered by the patent. Think of Thomas Edison and his most famous patented invention, the light bulb.

A provisional patent application is a step toward obtaining a utility patent, where the invention might not yet be ready to obtain a utility patent. In other words, if it seems as though the invention cannot yet obtain a utility patent, the provisional application may be filed in the Patent Office to establish the inventor's priority to the invention.As the inventor continues to develop the invention and make further developments which allow a utility patent to be obtained, then the inventor can "convert" the provisional application to a full utility application.

A provisional patent has several benefits:

A) Patent Pending Status: The most well-known benefit of a Provisional Patent Application is that it allows the inventor to immediately begin marking the product "patent pending."

C) Establishment of a filing date: The provisional patent application also provides the inventor with a crucial "filing date." In other words, the date that the provisional is filed becomes the invention's filing date, even for the later filed/converted utility patent.

Requirements for obtaining a utility patent

A) Novelty: To obtain a utility patent, you must initially determine whether your invention is "novel". For example, if you were to apply for a patent on the light bulb, it seems quite clear that you would not be entitled to a patent, since the light bulb is not a new invention. In rejecting your patent application, the Patent Office would actually cite the Edison light bulb patent against you as relevant "prior art" (prior art is everything "known" prior to your conception of the invention or everything known to the public more than one year before you file a patent application for the invention).

Any trivial physical difference will suffice to render your invention novel over a similar invention.If you were to invent a square light bulb, your invention would actually be novel compared to the Edison light bulb (since his was round/elliptical). If the patent office were to cite the round Edison light bulb against your square one as prior art to show that your invention was not novel, they would be incorrect. However, if there exists an invention which is identical to yours in every way your invention lacks novelty and is not patentable.

What is considered prior art by the Patent Office?

A) Prior art which dates back prior to your date of invention: It would seem to make sense that if prior art exists which dates before your date of invention, you should not be entitled to obtain a patent on that invention since you would not truly be the first inventor. Section 102(a) of the patent law specifically describes the things which can be used as prior art if they occur before your date of invention:

1) Public knowledge in the United States: Any evidence that your invention was "known" by others, in the United States, prior to your date of invention. Even if there is no patent or written documentation showing that your invention was known in the United States, the PTO may still reject your patent application under section 102(a) as lacking novelty if they can show that your invention was generally known to the public prior to your date of invention.

2) Public use in the United States: Use by others of the invention you are attempting to patent in public in the United States, prior to your date of invention, can be held against your patent application by the PTO.

3) Patented in the United States or abroad: Any United States or foreign patents which issued prior to your date of invention and which disclose your invention will be used against your patent application by the PTO.

1) Commercial activity in the United States: If the invention you wish to patent was sold or offered for sale in the United States more than one year before you file a patent application, then you are "barred" from ever obtaining a patent on your invention.

2) Public use in the United States: If the invention you wish to patent was used in the United States by you or another more than one year before your filing of a patent application, then you are "barred" from ever obtaining a patent on your invention.

4) Patented in the United States or abroad: If a United States or foreign patent covering your invention issued over a year prior to your filing date, you will be barred from obtaining a patent. Compare this with the previous section regarding United States and foreign patents which states that, under 102(a) of the patent law, you are prohibited from getting a patent if the filing date of another patent is earlier than your date of invention. Under 102(b) which we are discussing here, you cannot get a patent on an invention which was disclosed in another patent issued over a year ago, even if your date of invention was before the filing date of that patent.

Invention Corporations Give Patent Help...and Other Scams

In truth, you can save thousands of dollars just by filing your own patent. You will need to draft your patent in a manner that is acceptable to the patent office. As the patent office is overloaded with a mountain of applications at the moment, getting a reply from the patent office might take years to come about, if at all! The reason is that a patent application has to be written in a specified way.

Now, doing a 'one dollar' patent is definitely doable and here is the scheme of things:-

First of all, assuming that you already have a vague idea of what you want to patent, go and search for published patent papers on the same or near similar topic. Then read through them as if it is your bible!

Good Gracious, a One Dollar Patent!

Now days it seems anyone with an idea is an inventor. Granted, we do have people coming up with marvelous and very creative ideas. I think it's because most so-called inventors, don't take the time to investigate if there is even a market for their product. Remember that 10% I talked about,well that pertains to the Invention Companies as well. Of course there is always information on Patent Help. They want to plant that seed of protecting your fantastic idea right away. The other document they enclose is your safe form to submit your idea. Your idea or invention has enormous potential. Of course once they determine yours is a unique idea, then they will be there to assist you with a Patent. That cost is not quoted of course, because they must do the Patent Search first.

For those unsuspecting "inventors" who let them do the Patent Search, the company also offers the complete line of services, designed to take your idea from concept to market.

There are a few Invention Companies that do offer to pay for everything, if your idea or invention is worthy of their investment. A very large niche, but none the less, a niche market. Let the manufacture who buys the idea pay for your real Patent. Something you'll never hear from those other invention companies.

Well now that I knew about patent searches, patents, and provisional patents, I thought what else didn't I have knowledge of. *; The EXACT sequence of events you need to follow to launch your invention idea.

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In simple terms, the patent holder charges the company with getting someone else to infringe.

As a result, the Supreme Court has established a "Willful Blindness" test to determine if an alleged inducer had knowledge of patent infringement.

Using Inducement of Infringement to Protect Patent Rights

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Thomson has been the Chinese consumer Electronic Patent lingering shadow of corporate head, from DVD To traditional TV, the approved Thomson bankruptcy news, the Chinese consumer electronics industry may not be good news. Renowned intellectual property experts, Beijing Intellectual Property Agent with Li Jun Cheng Liu Fang told bits partner network, "the Chinese color TV enterprises are required to pay annually to Thomson a large number of patent licensing fees, even if the bankruptcy, the license fee contract will not be Tom Johnson's bankruptcy exemption. " In 2003 Thomson proposed to the Chinese enterprises each 1.5 U.S. dollars DVD patent fee; in 2005, Thomson MP3 business to the Chinese charge 75 cents each royalty. Patent if the owner changed, the Chinese color TV enterprises have also changed a company equivalent. However, these contracts permit fee will not exempt Thomson bankruptcy. "Thomson patents of digital television companies such as less than Korea, but it is based on technology and the TV audio and video technology is still quite a number of basic patents, patent licensing industry as the leading TV Big Brother status can not be shaken. "Patent shall be guilty of such. Despite the worldwide use Thomson joint venture, etc. for industry or market expansion, but its patent exclusivity has never wavered.

Risks of Filing Provisional Patent Applications

The due diligence process must take into consideration the competitive patent landscape.

Are the patents paid up in the Patent Office?

Do at least some of the patent claims cover the seller's products?

My client found CleanCo to be a good target for acquisition because CleanCo's product met a strong consumer need and, at that time, commanded a premium price in the market.

Due diligence revealed that CleanCo had few assets: the small manufacturing plant, limited but growing sales and distribution and several patents covering the sole CleanCo product. CleanCo owned the patents and had kept the fees paid. CleanCo's patent attorney had done a good job on the patents: the CleanCo product was covered well by the patents and there were no obvious legal errors made in obtaining the patents. So, I gave the transaction the thumbs up from the patent perspective. If a regular, complete, patent application is made ready and filed within a year from the filing date of the provisional patent application, the regular patent application may be accredited to the filing date of the provisional patent application, but only if the provisional application meets best mode and enablement requirements.

In order to be legally binding, the provisional patent application must adhere with the first paragraph of section 112 of the patent law. As the U.S. Patent and Trademark Office does not consider these applications, it may not become obvious that a provisional application is worthless until after the deadline for filing a patent application has elapsed. An unacceptable patent application has nothing of value. A provisional patent application that is not designed by a patent attorney is likely to have numerous hindrances.

Various errors that can be made in drafting a patent application are explained in my guidebook on how to find a patent attorney.

If there is no finances for a complete application and a provisional application is filed, a full application designed by a patent attorney ought to be filed as soon as viable after the provisional application is filed. Nobody will prompt you of the cutoff date for filing an authentic patent application.

With these risks considered, provisional patent applications that are not drafted as full regular patent applications can still be beneficial for gaining "patent pending" status if there is simply no resources for a comprehensive patent application.

Will My Invention Sell? Acquire Out If It Will Sell before Spending Income on a Patent

Can patent lawsuits in the medical device industry be forecast? Innovation is at the heart of the medical device industry.

Of course, with the record number of patent applications being filed, and the large number of patents issued each year, it would be logical to expect that the number of patent related lawsuits would also increase.

Number of Claims

Since the claims set the boundaries of the invention, the applicant has an incentive to define the invention through a number of broad claims.

So how does the number of claims appearing in a patent correlate to the likelihood that the patent will someday be litigated? Empirical studies have found that litigated patents include a larger number of claims as opposed to non-litigated patents. In fact, one study determined that litigated patents had nearly 20 claims on average, compared to only 13 claims for non-litigated patents.

Patent claims are easily the most important part of the patent.

The field of technology protected by the patent may also explain why patents with a large number of claims are more likely to be litigated. The results show an average of 17 claims per patent. This number falls somewhere in the middle of the claim numbers for litigated and non-litigated patents cited above. In addition to having a higher chance of being litigated, these results may indicate that the crowded medical device industry values their patents and anticipates litigation, with the end result being patents having a larger number of claims.

Prior Art Citations

Researchers have used this citation information to conclude that the number of prior art citations appearing in a patent is a good predictor of whether a patent is likely to be litigated. One study found that litigated patents on average cited 14.2 U.S. patents, while non-litigated patents cited only 8.6 U.S. patents. The study also showed that litigated patents are more likely to be cited as prior art by other issued patents, and that litigated patents include more self-citations, that is, citations to other patents owned by the same assignee.

How do patents from the medical device industry compare? Again, using the small sample of endoscope patents noted above as a proxy for the medical device industry, the average number of U.S. patents cited was approximately 37. Although the study does not cite an average for self-citations, it does find that litigated patents received an average of 12.2 citations from other patents, compared to only 4.1 citations received on average for non-litigated patents. The average number of self-citations and citations received for the endoscope patents were only 1.74 and 0.34, respectively. Similarly, the large number of citations may be due to attempts to get around prior art in the crowded and ultra-competitive medical device field.

The study provides an explanation for why medical device patents are more likely to be litigated by noting that the medical device industry, as a whole, view patents as valuable assets.

Patent litigation is, in fact, on the rise. A large number of claims and prior art citations may increase a patent's likelihood to end up before a court. A crowded technological field may also lead to a higher risk of patent litigation.

Medical Device Industry Patent Litigation Likely to Rise?

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A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single rare exception noted below.

It does provide a priority date for concurrent later-filed non-provisional applications for the content that is in the provisional.

While patent attorneys often speak of "converting" a provisional into a non-provisional, this is not usually an accurate description of the case (with a single exception), since the provisional has no life beyond its twelve-month term and "converting" is usually done by filing a non-provisional application that claims benefit of the filing date of the provisional.

A provisional patent application requires a full written specification and all the drawing figures, but does not require claims.

Lastly, a provisional patent application never sees the light of day and remains confidential, unless a non-provisional patent application (or a Patent Cooperation Treaty application -- to preserve foreign filing rights -- or a design application) takes priority to it.

For more information on provisional patent applications, see .

Non-provisional

A non-provisional patent application, sometimes called a "regular" patent application or just a "patent application", is a "real" application for a patent. Claims are the invention.

For more information on non-provisional patent applications, see .

Many people think that a provisional patent application is less costly way to get a patent than a non-provisional patent application.

Again, because the provisional expires and a non-provisional must be filed to take priority to the provisional, this two-step process is more expensive.

There are at least two good reasons to file a provisional patent application:

Alternately, if they do not find someone, they plan to let the provisional patent application expire without filing a non-provisional patent application and incur no further expenses.

Provisional or Non-provisional Patent Application - Which Should You Choose?

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