Communicate. Put everything in writing—responsibilities, expected sales

12.5 Patent Applications

373 Patents give you bragging rights and a license to litigate. In reality, a patent is only as good as the inventor’s ability to enforce it. In other words, if the holder of a patent is not capable of suing a party that is infringing on that patent, then the patent is virtually useless. Since lawsuits can be extremely expensive, an individual or company holding a patent must decide whether it is better business to allow the infringement or to litigate. Being an assignee to a patent owned by a large organization has a positive benefit when it is necessary to enforce a patent. Whether applying for a patent or not, it is a good idea to write a disclo- sure whenever a new, potentially patentable idea is developed. A disclosure is description of the idea that is signed, dated, and witnessed. The description of the idea should be in terms of specific claims. Claims describe the new or unique utility or function of the device. A disclosure serves as a legal statement of when the idea was first conceived. There are essentially two types of patents: design patents and utility patents. Design patents relate only to the form or appearance of the article. Thus, there are many design patents for the basic toothbrush, since each toothbrush has a different appearance. Utility patents, on the other hand, protect utilitarian or functional aspects of the idea. The patent discussion in Chap. 7 and here pertains only to utility patents. Utility patents are given for processes, machines, manufacturing techniques, or composition of matter. Applying for a patent is time-consuming but not overly expensive. The pro- cedure outlined in Fig. 12.4 shows the steps involved, whether the application is done by an individual or through a lawyer. The first step is the preparation of the specification or prospectus role in the document that becomes the patent. The basic parts of the specification are shown in Fig. 12.5. When preparing a specification, it is best to seek help from a patent lawyer or reference a book with details for writing claims and the proper patent format. Within three months of receiving the patent application, the patent office will acknowledge its submission and accept the application for consideration. The term “patent applied for” can be used after the specification is accepted. The term “patent pending,” often seen on products, has no legal meaning. The second phase of the patent process begins after the application is filed. The patent office assigns the application to an examiner familiar with the state of the patent art in the area of the application. This examiner then reviews the application and searches the patent literature. This initial study of the application and the subsequent iteration with the applicant takes months or even years. Seldom does the examiner accept the first application outright. It is more likely that he or she objects to the document itself or to the specification or rejects one or more of the claims. Problems with the document usually stem from not following the rigid style required of patent text and drawings. Problems with the specification concern 374 CHAPTER 12 Wrapping Up the Design Process and Supporting the Product Prepare specifications File with patent office • Title of invention • Abstract • Drawings • Background of invention • Summary of invention • Description of drawings • Claims Application allowable Objection or rejection Submit specifications with oath that invention is original and with filing fee. When application accepted, use term “Patent applied for.” Objections to documentation Objections to specifications Rejection of claims Applicant amends application in response. Review by patent office Notice of allowance Payment of fee Issuance of patent Figure 12.4 Patent application procedure. the content of the claims. Since the claims define the invention, they are the heart of the patent. All the other information is there simply to support the claims. After the applicant and the patent examiner agree on the application, the patent office issues a notice of allowance. This means that the patent will be issued on payment of an issue fee. About 65 of the patents applied for are ulti- mately granted. Virtually all of these have been greatly modified during the process.