In The Name of Allah

By:Pooria GillPh.D. of NanobiotechnologyP.Gill@mazums.ac.ir

www.invent.org/workshop/3_1_0_how_to_patent.aspwww.legalserviceindia.com/articles/ptwy.htm

How to Patent ?

What is Patent?

Patent, is a legal document granted by

the government giving an inventor the

exclusive right to make, use, and sell an

invention for a specified number of

years.

Patents are also available for significant

improvements on previously invented

items.

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Goal of Patent System!

The goal of the patent system is to encourage

inventors to advance the state of technology by

awarding them special rights to benefit from their

inventions.

Books, movies, and works of art cannot be

patented, but protection is available for such items

under the law of copyright.

Patent law is one branch of the larger legal field

known as intellectual property, which also includes

trademark and copyright law.

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What is patentable?To qualify for a patent, the invention must meet three basic tests:

First, it must be novel, meaning that the invention did not previously

exist.

Second, the invention must be non-obvious, which means that the

invention must be a significant improvement to existing technology.

Simple changes to previously known devices do not comprise a

patentable invention.

Finally, the proposed invention must be useful. Legal experts

commonly interpret this to mean that no patent will be granted for

inventions that can only be used for an illegal or immoral purpose.

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Discovery is NOT Patentable!

Some types of discoveries are not patentable. No one

can obtain a patent on a law of nature or a scientific

principle even if he or she is the first one to discover it.

For example, Isaac Newton could not have obtained a

patent on the laws of gravity, and Albert Einstein could

not have patented his formula for relativity, E=mc2.

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EPC Law Under the law of the European Patent Convention (EPC),

patents are only granted for inventions which are capable

of industrial application, which are new and which involve

an inventive step.

An invention may be defined as a proposal for the practical

implementation of an idea for solving a technical problem.

An invention is capable of industrial application if it can be

made or used in any kind of industry, including agriculture,

as distinct from purely intellectual or aesthetic activity.

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4 Types of PatentsUnder the United States law 4 types of patents can be issued:

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. The term of a design patent is 14 years.

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. Plant patent protection is available for biotechnology processes, genes, seeds, plant parts, cultivates, and hybrids. Utility patents may also be obtained on plants if the invention is new, useful, and not obvious.

Provisional patents allow applicants to inexpensively establish an early filing date, or constructive reduction to practice, for an invention described in the provisional application without starting the 20 year patent term clock. It can provide up to twelve months to further develop the invention, determine marketability, acquire funding or capital, seek licensing or manufacturing.

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What is not patentable?Some inventions cannot be patented!

Under the law of the European Patent Convention (EPC) the list of non-

patentable subject-matter includes:

Methods of medical treatment or diagnosis

New plant or animal varieties

The following are not regarded as inventions:

Discoveries

Scientific theories

Mathematical methods

Aesthetic creations (such as works of art or literature; schemes, rules and

methods for performing mental acts, playing games or doing business;

presentations of information; computer software)

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History of Patent8

Patent Process: Overview

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Patent Process: The Idea

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Once you have your idea, one of the first things to do is follow the practice of industrial researchers and conduct a preliminary literature search to determine that your invention has not already been described. Quite simply, maybe someone else has already had the same idea and received a patent. Further investigation is not a wise investment of time without knowing your idea is novel.

The next thing to do is test practicality: do you have something that the public is willing to pay for. Under the conditions of the patent law, your discovery must be "useful". This means that your discovery must have a purpose and your invention must work. The process of making sure that your invention will work to perform its useful purpose is called "reduction to practice".

It is not always necessary to physically reduce your invention to practice. You may use lab tests to demonstrate usefulness. Filing a patent application also is a type of reduction to practice.

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Patent Process: Document

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It is important to keep accurate records documenting your progress on your

invention, starting with a written record of your idea even before doing any

experimentation. Then make a complete written description, with drawings and

photographs if appropriate, at all stages of your experimentation. Keep any

correspondence about your work, sales receipts from materials, and any other

records that might help you prove the facts and dates of your accomplishments.

Get at least one trusted person who can understand your invention and

corroborate your work to sign and date your written description of your project.

Then sign the records yourself and affix the date. If another inventor should come

up with "your invention" at about the same time, the records could be relied upon

to establish who was the first inventor.

At this stage, you should be extremely secretive about your work. If you describe

your invention in a printed publication, or if you use it publicly or place it on sale,

you must apply for a patent within a year of the public disclosure. Otherwise, your

right to patent the invention in the U.S. will be lost.

Importantly, although you have a one-year grace period in the U.S. after public

disclosure or sale, a public disclosure even one day before filing your patent

application can bar the patent in foreign countries.

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Patent Process: Research

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You've tested your idea and you know it works. You've kept complete and accurate records of your conception and experimentation. Now what? Under the conditions of the patent law, you must establish that your idea is novel and not obvious.

An invention cannot be patented if before you made your invention:The invention was known or used by others in this country.The invention was previously patented in this or another country.The invention was described in a printed publication anywhere in the

world.There were publications, patents or uses that make your invention obvious.

You can do searches on the World Wide Web. Two major sites that allow you to search patents filed since the mid-1970's are: The U.S. Patent and Trademark Office http://www.uspto.gov

- there is no charge to search on this site. Delphion http://www.delphion.com/

- formerly the IBM Intellectual Property network, this site charges a subscription fee.

If you decide to get help, be sure to hire a practitioner who is registered to prepare and prosecute patent applications. You can consult the Yellow Pages of your phone book; the Patent and Trademark Office also maintains a list of registered patent attorneys and agents.

The list is also available on the U.S. Patent & Trademark Office web site.

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Patent Process: Study

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Whether you conduct the search yourself or hire someone else to do it, you will have to study the patents and publications that are identified. If any of the patents disclose your idea, you cannot be granted a

patent. Likewise, if your invention is described in any of the scientific

literature, you cannot obtain a patent on it.

It is possible that one or several existing patents or publications might describe something similar to your discovery, but they may be different in some way. In order for you to obtain a patent for your invention, those differences must be unobvious to anyone with knowledge in the area related to your invention. For example, ordinary differences, such as the substitution of one

material for another, changes in size, or other obvious modifications generally are not patentable.

But you can obtain a patent to cover an improvement or a new feature which makes your invention different from the prior patents.

The determination of unobviousness and of patent ability of an invention is often a complex issue involving a combination of legal principles and technical facts. Generally you should not attempt to make these determinations on your own.

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Patent Process: Apply

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An application for a patent consists of three parts:1.A written description of your invention.

This document, called a "specification", must be clear enough so that anyone skilled in the subject matter of the invention could recreate your idea and use it. It must fully and completely describe the invention; nothing may be withheld. This part of the application must conclude with one or more "claims" which legally define your invention.

The wording of this part of the application is critical to the patent rights, if any, you may receive. Although you have the right to prepare your own application documents, getting assistance of a licensed patent practitioner will help your chances of obtaining good patent protection.

With the written description, you must also submit a signed declaration stating that you believe yourself to be the first inventor of the discovery named.

2. An illustration or drawing of the invention. An illustration or drawing of the discovery, in those cases where they are possible, must show every feature described in the first part of the application.

3. A filing fee. Fees change periodically and should be verified by your patent practitioner. Consult the U.S. Patent & Trademark Office's web site for current fees (www.uspto.gov).

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To give you an idea of cost (for 1999): The basic filing fee for an application for a utility patent is $690For a design patent, $310For a plant patent, $480

(Additional fees are based on the total number of claims described in the application.)

When a utility patent is issued, another fee of $1,210 is required:For a design patent, $430For a plant patent, $580

Maintenance fees are required periodically for the duration of a utility patent to keep it in force. Maintenance fees are due 3 1/2 years after issue ($830), 7 1/2 years after issue ($1,900) and 11 1/2 years after issue ($2,910).

All fees (filing, issue and maintenance) are reduced by half if the applicant is a "small entity"-in other words, an independent inventor, a small business or non-profit organization inventor. When the application documents are finished they should be mailed

to the Commissioner of Patents and Trademarks.

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Once in the Patent Office, the papers will be studied by a Patent Office examiner. You will be notified in writing about any decision concerning your patent application. (Be patient, it takes about two years for the Patent Office to process each application).

If your patent is denied, then you and your patent practitioner can amend the claims and point out why the patent should be granted. It is usual that the patent examiner will first reject your application even if eventually it is found to be patentable. This exchange of rejections from the Patent Office and amendments by you and your practitioner may continue until the patent examiner allows your application or says that the rejection is final. If you wish to continue seeking a patent in this eventually, then you and your practitioner may appeal to the Board of Patent Appeals and interferences.

If your patent is granted, congratulations! You now have a period of years in which to market and turn a profit on your idea.

Unless you have some financial resources of your own, you will probably need to seek help in the marketing of your invention. Some suggestions for locating manufacturers and individuals who might be interested in your invention: Seek information from chambers of commerce and banks. Seek information from the district offices of the Small Business Administration and of the

U.S. Department of Commerce. Write to the governor of your state to obtain a list of planning and development agencies

that assist manufacturers and communities that are seeking new product/process ideas. If you want to sell or license your patent rights, you can, for a fee of $25, request the U.S.

Patent and Trademark Office to publish such a notice in the Official Gazette, the weekly publication of information related to patents and trademarks.

You can find copies of the Gazette in the library, or you may buy it from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402.

For more information, visit the Patent Trade Office at www.uspto.gov.

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Thanks for your Attentions

Mazandaran University of Medical Sciences and Health Care

Sari, I.R. Iran

www.mazums.ac.ir