USPTO to Update Rules of Professional Conduct

USPTO to Update Professional Conduct Rules

New rules will correspond to the ABA and most state bar requirements

WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced last week its proposal to update the USPTO Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association (ABA), versions of which have been adopted by 49 states and the District of Columbia.

Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.

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To get an idea of the proposed changes, view this comparison chart of the ABA Model Rules of Professional Conduct and the proposed USPTO Rules of Professional Conduct.  More information regarding the package is located on the USPTO’s website at: www.uspto.gov/ip/boards/oed/ethics.jsp.

The USPTO is seeking public comments on the proposal for a period of 60 days, ending December 17, 2012. This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law.

The USPTO requests that comments be sent either by email to:

or by regular mail to:

  • Mail Stop OED-Ethics Rules, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, marked to the attention of William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline.

U.S. Patent and Trademark Office Seeks Public Comment on Proposed Fee Decrease

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced in September that it is taking further steps to implement the most significant reform of the U.S. patent system in more than a century, and is asking the public for comments. 

The Office published a Notice of Proposed Rulemaking (NPRM) in the Federal Register on Thursday, September 6, 2012, seeking public input on proposed patent fees, including reductions to fees for new procedures and programs created by the broadly bipartisan Leahy-Smith America Invents Act (AIA) that allow robust reviews of issued patents, and provides discounts to individual inventors and small businesses.

Fees are currently set by statute. The AIA directed the USPTO to set these fees on a cost-recovery basis and to seek public and stakeholder input in setting those fees, a change widely supported by businesses, entrepreneurs, and educational institutions.

The proposed fees are at least 22 percent lower for a routine patent process—i.e., filing, search, examination, publication, and issue fees—than the current fee schedule. The current proposed fees also are lower than those originally proposed by the USPTO in February 2012. The Office acted on extensive public feedback solicited in writing and at public hearings held by the Patent Public Advisory Committee in Alexandria, Virginia, and Sunnyvale, California.

With the publication of the NPRM, the USPTO opened a 60-day comment period (through November 6th, 2012) in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register. Further information about the NPRM for proposed fees may be found at: http://www.uspto.gov/aia_implementation/Proposed_Fee_Schedule.pdf.

The proposed fees continue to keep the cost of entry into the patent system low, making it easier for innovators to acquire venture capital, begin hiring, and moving their goods and services to market. The proposed fees also will enable the USPTO to implement a discounted fee structure that provides 75% savings on many patent fees for micro entities, primarily individual inventors and small entrepreneurial ventures. Also included in the proposed fees is an expansion of the existing 50% discount for small entities.

The AIA granted the Office fee-setting authority in order to give it the ability to set fees that reflect the costs of the services it provides, while ensuring it has the financial resources needed to reduce the backlog of unreviewed patent applications, reduce patent pendency, and perform its core missions efficiently. This new authority was widely supported across the business, innovation, and education communities.

New rules and procedures mandated under the AIA went into effect on September 16, 2012, including three new administrative trial processes. Under the AIA, those reviews must be completed by the Patent Trial and Appeal Board (PTAB) within one year of filing. The proposed fees introduced in the NPRM reduce the cost recovery fee amounts that were effective on September 16, 2012.

The public is welcome to review and provide comments to the USPTO regarding these proposed fee schedule changes.

The AIA will hopefully restore the U.S. to its position as the global leader in intellectual property, empowering businesses large and small to enter the global market with innovative goods and services that will create U.S. jobs, increase U.S. exports, and grow the U.S. economy.

Will the 2012 SHIELD Act STOP the Patent Trolls?

Patent trolls, technically referred to as non-practicing entities (NPEs), are people who file outrageous patent lawsuits that often threaten the viability of the firms they attack.  Patent trolls are major thorns for America’s small tech companies, and combined to cost some of those companies over $29 Billion dollars in 2011 alone.

One Oregon Democrat, Representative Peter DeFazio decided to bring this costly and underhanded matter to the attention of Congress. In late July, DeFazio and Representative Jason Chaffetz (R-Utah) introduced legislation into the U.S. House of Representatives called the Saving High-tech Innovators from Egregious Legal Disputes (SHIELD) Act [PDF].

The bill is designed to discourage NPEs from filing frivolous lawsuits by requiring the Patent Troll to pay the defendants’ legal costs if their suit is unsuccessful.  The key language of the bill seeks “To amend chapter 29 of title 35, United States Code, to provide for the recovery of computer hardware and software patent litigation costs in cases where the court finds the claimant did not have a reasonable likelihood of succeeding, and for other purposes.

Why is this helpful?  Julie Samuels, an attorney who focuses on intellectual property issues at the nonprofit Electronic Frontier Foundation explained that, “Patent litigation has been called ‘the sport of kings’ because of the high cost.  It can cost tens of millions of dollars to defend a suit…while big companies might be able to afford the fees, smaller companies can’t and are left having to pay up and settle.”

Hopefully the 2012 SHIELD Act will turn the thorn on Patent Trolls for good. Rep. Chaffetz said, “The SHIELD Act ensures that American tech companies can continue to create jobs rather than waste resources on fending off frivolous lawsuits.”

Patent Protection and Sales Bans: Does the Consumer Lose Out?

A company has the right to protect its innovation through the patent application system and rigorously defend any infringement through patent prosecution, but is there a gray area that jeopardizes a consumer’s right to a competitive market?

 

Take the recent litigation by Apple vs. Samsung  into account, where Apple alleged that Samsung’s Galaxy Note Tablet contains their technology and styling, and you could find an argument for consumer choice. When technological advances create a situation where the consumer market demands a synchronized approach to product usability, is it fair that an ongoing prosecution can effectively remove a brand from the market by stopping sales?

 

In this fast-paced world, is it viable to expect a consumer to spend days relearning a completely different user interface every time they happen to change brands? With the current fines levied on Samsung, there’s no doubt that Apple has had prior cause for complaint to protect its patents, but how will ongoing litigation effect consumer choice if a sales halt is called?

 

What may be the biggest cause for consumer alarm is the idea of a product monopoly, which could create elevated prices in the market. Patent protection and prosecution, with competitive consumer choice in mind, can therefore become a minefield for any company with a consumer-focused public image to maintain.

 

In the technology field, patent prosecution is widespread, so it is essential that patent designs are detailed and all-encompassing to create a clear route to prosecution should an infringement occur. Whether the route for prosecution should also entail a sales ban is something that savvy inventors and businesses need to discuss with their patent attorneys going forward in this consumer-lead market.

 

Hiring an Industrial Designer

 

Do you have a great product concept that you want to make more commercially attractive?  Are you considering patenting your concept?  If you’d like to increase the probability of acceptance for your patent application or the quality of your product design, consider working with an industrial designer.  Hiring an industrial designer will help you refine the design of your idea and provide valuable assistance in the development of your patent application.

 

An industrial designer is an engineer that focuses on the appearance and use of a product.  An industrial design engineer is experienced in combining both art and science to create products that are both functional and aesthetic.  They can help you examine the functionality of your concept, and refine the efficiency and effectiveness of its operation.  Professional industrial designers occasionally work in teams because some have a stronger engineering background, while others have a more artistic background.

 

Using an Industrial Designer for Product Development

 

When you’re developing a concept for a commercial product, an industrial designer can:

 

  • Improve the aesthetics of the product or system by creating a look that is attractive and unique to your product and/or company
  • Improve the ergonomics of the product or system, making it easier and more comfortable to use.
  • Improve the usability of the product or system by simplifying the functionality or operation and reducing the required learning curve to use the product or system
  • Improve the marketability of your product or system by making it more attractive to potential buyers.

 

Using an Industrial Designer for Patent Applications

 

While an industrial designer can be a great resource for product development and helping you to create a product or system that is more commercially viable, an industrial designer can also be a valuable partner when creating patent applications.  Every patent application must include detailed descriptions and drawings of the invention, and all must be presented in a very specific format.  The descriptions and drawings have to convince the patent reviewer that your invention is novel, and the patent drawings have to reflect those claims.

 

Because of the specific formats and requirements for the description and drawings in a patent application, hiring an industrial designer that is intimately familiar with the patent application process can help to develop both the description and the drawings and improve the probability of acceptance of your application.

 

It’s often beneficial to hire experts to help you in your business to fill gaps in your in-house expertise, and hiring an industrial designer is no exception, whether you want to improve the overall design of your concept or whether you are filing a patent to protect your intellectual property.

Five Reasons Why To Patent Your Invention

Inventors are commonly encouraged to patent their inventions, but the patent process can take time and resources to execute properly.  Some inventors decide that the cost is not worth the effort, and forgo the process, without realizing the significant benefits that patenting their invention can provide.

 

According to the USPTO, The right conferred by the patent grant is, in the language of the statute and of the grant itself, ‘the right to exclude others from making, using, offering for sale, or selling’ the invention in the United States or ‘importing’ the invention into the United States.

 

Here are five reasons why it is important to patent your intellectual property:

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  1. To Protect Against Intellectual Property Theft – One of the main reasons to patent your invention is that it is very difficult to convert an idea to market without interacting with parties outside of your company.  You’ll have to share concepts with investors and manufacturing partners in order to commercialize your concepts.  By filing for a provisional patent on your design, you gain legal protection against the unauthorized use of your concept.
  2. To Protect Your Company’s Ability to do Business – To put it simply, if you don’t patent it, someone else will, eventually.  You could not only have competition in your market, but you could also lose the rights to compete at all.  If this happens, then all of the investment that you put into your business could be for naught and you could become entangled in costly legal battles.
  3. To Increase Market Position – By developing a patent portfolio for your company’s intellectual property, you will increase your market position by limiting the ability of other companies to compete in your specific niche.  This increased market position and reduced competition can result in an increase in return on investment (ROI) for your company.
  4. To Guarantee Your Ability to Charge Licensing Fees– You may never get to the point where you fully commercialize your concept, but there may be others that have the resources to make your ideas come to life.  This is where licensing can be a great benefit.  By patenting your design, you can license the patent to a partner company, who then invests in the commercialization.  Your company then earns licensing fees for the use of the technology.  Without patents, it would be legally difficult to transfer technology to a development partner.
  5. Patents Look Good on Paper – A patent portfolio is tangible evidence of the technical expertise and commitment to development that you have instilled in your company.  Investors and partners will perceive an increased level of expertise, quality, and innovation in your company, which could lead to increased investment.  Investors and partners will feel a sense of security knowing that you have protected your IP, which will in turn protect their investment.

 

Patenting a product design can take time and resources to complete, but the benefits that patent protection can provide to your company can far outweigh the investment required.

Why NOT to use Invent Help Companies like Davidson to Patent Your Invention

 

 

 

 

 

 

 

 

 

 

Although their advertisements promise to make it simple to submit an idea, there are a lot of things that companies like Davidson, Invent Help, and other lesser known invention patent “simplifying specialists” do not tell you.  Before diving in and expecting to make millions, consider these important facts:

 

  • For starters, it is virtually impossible to sell or submit an idea to any major company without first filing a patent. Most invent help companies do not protect your idea or invention by filing a patent for you. To protect your invention from the get-go, it is best to try to obtain a patent from the USPTO on your own.  For help with filing a first-time patent, seek the advice of a patent attorney. Be on the lookout: Companies that advertise the ability to file your patent for only $99 are definitely SCAMS and should be avoided altogether.

 

  • Second, most companies will not do a patent search to make sure your invention does not already exist. Invent help companies are in the business to make money, so they don’t necessarily mind taking yours. It is important to pay out of your own pocket for a patent search before deciding to move forward with any invention.  Submitting an idea, only to find out someone has a patent on something very similar, results in lost money and wasted effort.

 

  • Next, the fees for providing inventor services, professional patent illustrations, attorney fees, publicity and submissions to the industry are all additional.  These fees will not be absorbed by any invent help company, and you may actually be charged more than you would by seeking these services on your own. One way or another you will still have to pay for all professional services related to your invention, so why not have control over what you pay to whom?

 

  • Finally, know the statistics.  Invent help services cannot and should never claim to guarantee the success of any product idea. Inventor Spot Forum recently posted these statistics published by one major invent help company:

 “From 2003 to 2005, we signed submission agreements with 6,592 clients. As a result of our services, 119 clients have received license agreements for their products, and 15 clients have received more money than they paid us for these services.”

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Obviously this confirms that a person’s success rate is not guaranteed.

 

Everyone knows that all good things take time, hard work, and dedication.  You are the inventor, so be serious about taking the right steps toward protecting your invention before seeking promotional help from any one of the ideas-made-simple “invent help” companies. If you need professional help illustrating your idea, be sure to contact Inventia Patent Drafting right away!

Why A Good Patent Drawing is Important

A picture may be worth a thousand words, but a good patent drawing may prevent a thousand frustrations. First-time patent applicants, who might accidentally omit something in the written disclosure of a patent application, should know that a detailed patent drawing can potentially save that application from rejection.

A good patent drawing is a drawing that is detailed enough to visually convey pertinent information about an invention, including information that might be missing in the actual written description.

If you are a new inventor, and you want your invention to pass without question, then consider broadening the scope of your application by including multiple, detailed and professional drawings with your filing.

The primary benefit of filing a patent application is to capture a filing date that can be used to demonstrate priority of your invention. In order to capture the full benefit of a filing date, a good patent application should completely cover all aspects of the invention and all permutations at the time the application is filed.

Simply stated, supplying multiple, but good patent drawings the first time can help expedite the patent application approval process.

Because the detail of the patent drawing is so important, having the work done by a professional patent illustrator is extremely wise. Using a professional is well worth the investment, because a professional is specially trained to deliver a good patent drawing…specifically, the type of detailed drawing that will correctly conform to ever-changing USPTO drawing standards.

Hiring a professional patent illustrator such as Inventia Patent Drafting is more affordable than you think.  Depending on the complexity of the drawing, charges typically range somewhere between $50 and $150 per sheet.

Compared to the potential cost of application rejection, the valuable time lost in re-filing, and the headaches associated with completely starting over….good patent drawings are worth every dime.

Why You Need a Professional Patent Illustrator

First time inventors often ask if they really need to hire a professional patent illustrator to draw their idea.  Hiring a certified patent illustrator is not only important to the success of your patent application, but a huge time saver…and headache deterrent for you. Career inventors and multiple patent owners agree: professional patent illustrators not only protect your design from USPTO rejection, but can often spot inconsistencies that an IP attorney might miss.

A professional patent illustrator is important because they make it their business to stay informed about current USPTO Standards for Drawings.  Those standards start with utilizing the most widely accepted drawing method: black and white line art.  Black and white drawings also known as line art must be used for patent drawing submissions.  Today’s professional patent Illustrators also use modern software to help them quickly create precise drawings that meet ink requirements while simultaneously adhering to other strict USPTO drawing standards.

For patent drawings to be accepted, they must also include:

  • Identification of the drawings: Identifying indicia should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet within the top margin.
  • Graphic forms in drawings. Chemical or mathematical formulas, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated.
  • Margins. The sheets must not contain frames around the sight (i.e., the usable surface). Each sheet must include top and left side margins of at least 2.5 cm., a right side margin of at least 1.5 cm., and a bottom margin of at least 1.0 cm., thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on DIN size A4 drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
  • Views. Patent drawings must contain as many views as necessary to show the invention. They may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract.

There are many more specific USPTO guidelines including the arrangement of the views, scaling, symbols, and legends.  Still wondering why you might need a professional patent Illustrator?  Read the General Information Concerning Patents here, and contact Inventia Patent Drafting for help today.

Design or Utility?

There are two main types of patents granted by the U.S. Patent Office: design patents and utility patents.

Utility patents offer greater benefits than design patents.  Utility patents  protect the way an article is used and works.  Utility patents also allow many variations of the article to be claimed in one patent, making utility patents much more broad than design patents.  Utility patents can also be filed provisionally whereas design drawings cannot.

Design patents protect the appearance of the article.  Design patents are usually much cheaper than utility patents and are much easier to obtain.   If the main feature of you invention is the ornamental design, then a design patent is all you need to protect your invention.

We suggest you seek advice from a patent attorney to figure out which type of protection is best for your patent.