Introduction to Patents and the Patent Process · United States Patent and Trademark Office (USPTO)...

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Introduction to Patents and the Patent Process

Craig A. Fieschko, Patent Attorney

DeWITT ROSS & STEVENS, S.C.

2 E. Mifflin St., Suite 600

Madison, WI 53703-2865

Telephone: (608) 395-6722

Facsimile: (608) 252-9243

Email: [email protected]

TABLE OF CONTENTS

Glossary of Patent Terminology . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

A. What is a Patent? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

B. Why Get a Patent? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

C. Types of Patents and the Rights They Provide . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

C.1. Utility Patent: Purpose and Patent Term . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

C.2. Design Patent: Purpose and Patent Term . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

C.3. The Provisional Patent Application: An “Unfinished” Utility Patent . . . . . . . . . 7

D. Requirements for Patentability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

D.1. Patentable Subject Matter (Is the Invention Appropriate for Patenting?) . . . . . . 9

D.2. Utility (Is the Invention Useful?) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

D.3. Novelty (Is the Invention New?) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

D.4. Unobviousness (Is the Invention an Evident or Logical Development?) . . . . . 11

E. Inventorship: Who “Conceived” the Invention? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

F. Priority of Invention: The First Inventor Gets the Patent . . . . . . . . . . . . . . . . . . . . . . 12

F.1. Proof of Priority: Recordkeeping . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

F.2. Proof of Priority: Disclosure Document Program . . . . . . . . . . . . . . . . . . . . . . 13

F.3 Priority May Not Protect Against Infringement Liability . . . . . . . . . . . . . . . . 14

G. The Patent Application Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

G.1. Who Can Apply For A Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

G.2. Getting Started with the Application Process . . . . . . . . . . . . . . . . . . . . . . . . . 14

G.3. The Patentability Search . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

G.4. Drafting the Patent Application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16

G.5. Filing the Patent Application in the USPTO . . . . . . . . . . . . . . . . . . . . . . . . . . 17

G.6 Confidentiality of Patent Applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

G.7. Small Entity Status and USPTO Fee Discounts . . . . . . . . . . . . . . . . . . . . . . . . 17

G.8. Prosecution (Examination) in the USPTO . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

G.9 The Duty of Disclosure to the USPTO . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

G.10. Publication of the Patent Application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

G.11. Issuance (Granting) of the Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

G.12. Patent Marking . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

G.13. Maintenance Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

H. Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

I. A Patent Does Not Necessarily Mean a Patentee can Exploit the Invention . . . . . . . . 22

I.1. A Patent Does Not Necessarily Provide Immunity from

Infringement Liability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

I.2. Clearance (Noninfringement) Searches . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

J. Invalidating a Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

K. Foreign Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

L. Licensing and Marketing Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

L.1. License and Assignment Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

L.2. Marketing of Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

ABOUT THE AUTHOR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Craig Fieschko, Esq.

DeWitt Ross & Stevens

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Glossary of Patent Terminology

Patent law has several “terms of art” that are useful to know. Some of the terms more commonly

used in this document are summarized below:

Claims: Claims are the portion of a patent that defines the features of the invention for which

exclusive patent rights are secured. Depending on how the claims are drafted, they may

provide protection ranging from broad (they provide wide-ranging protection from copying

of the invention) to narrow (they allow copying of the invention if one or more nonessential

details of the invention are changed). In general, broad claims are more valuable, but they

are harder to obtain. See Sections G.4 (page 16) and G.8 (page 17).

Conception: Conception refers to the generation of such a complete idea of the invention (as it is to be

patented) that the invention could be constructed and used. Only the parties who

contributed to the conception of the invention are the true legal inventors that can be named

in a patent application. See Section E (page 12). It is useful to have proof of conception

in order to prove priority of invention if someone else alleges they developed the invention

first. See Section F (page 12).

Design Patent: Design patents protect the appearance of an invention regardless of its purpose or operation.

Design patents are generally less valuable than utility patents if one can change the

appearance of an invention and still have a valuable product. See Section C.2 (page 6).

Disclosure Document: The United States Patent and Trademark Office (USPTO) has a Disclosure Document

program wherein it will maintain invention records for a limited period of time, which is

useful to prove priority. Many inventors now use provisional applications in lieu of

Disclosure Documents. See Section F.2 (page 13).

Duty of Disclosure: After a patent application is filed, all parties involved in the application process have a

strict legal duty to disclose all information to the USPTO that might be relevant to the

USPTO’s grant of a patent. See Section G.9 (page 19).

Infringement: Patent infringement occurs when someone makes, uses, or markets an invention claimed

in an issued patent prior to the patent’s expiration. Infringement can subject the infringer

to monetary damages and injunctions against further infringement. See Section H (page

21).

Inventors: Legally, the inventors of an invention are those parties who conceived the invention: those

who developed such a complete idea of the invention (as it is to be patented) that the

invention could be constructed and used. A patent application can only be filed in the

names of the true legal inventors. See Section E (page 12).

Novelty: A key requirement for patentability (apart from unobviousness) is that the invention

claimed in a patent application must be novel: new in comparison to the prior art (to all

prior inventions). If an invention is not novel, it is said to be anticipated. See Section D.3

(page 10).

Patent Pending: Patent Pending means that a patent is applied for, but not yet granted. A notice of patent

pending status serves as a warning to potential infringers that a patent is forthcoming.

However, a patent applicant does not have the right to stop others from copying an

invention until a patent is actually granted. See Section G.5 (page 17).

Prior Art: Prior Art refers to the prior inventions, publications, and general knowledge against which

patentability of an invention is determined. See Section D.3 (page 10).



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Priority: A patent is usually granted to the party who has priority of invention, that is, the party who

is first to invent. However, since the first one to file a patent application is presumed to be

the first to invent, priority is often determined on the basis of who is first to file a patent

application, which makes early filing important. See Section F (page 12).

Prosecution: Also referred to as examination, prosecution is the time-consuming process wherein the

United States Patent and Trademark Office (USPTO) examines a patent application for the

patentability requirements. See Section G.8 (page 17).

Provisional Application: A provisional patent application, often more simply called a provisional application, may

be filed to establish a priority filing date and secure patent pending status where a utility

patent is desired. However, a utility patent will not be granted unless a utility patent

application is subsequently filed within one year of the provisional application’s filing. See

Section C.3 (page 7).

Reduction to Practice: Reduction to practice is the process of actually constructing or operating an invention.

Along with conception, reduction to practice can be important to proving priority of

invention. See Section F (page 12). However, an invention generally does not need to be

constructed or operated in order to file a patent application.

Small Entity: The United States Patent and Trademark Office (USPTO) allows a 50% discount on most

patent-related government fees if small entity status applies: if no rights in the invention are

held by a for-profit, noneducational entity having over 500 employees world-wide. See

Section G.7 (page 17).

Unobviousness: A key requirement for patentability (apart from novelty) is that the invention claimed in a

patent application must be unobvious. Simplistically stated, unobviousness requires that

there must be no clear suggestion in the prior art that preexisting inventions could be

beneficially combined or modified to make the claimed invention. See Section D.4 (page

11).

Utility Patent: A utility patent, the most common form of patent, protects the structural or operational

features of inventions, generally without regard to what the invention looks like. See

Section C.1 (page 5). A utility patent can protect against competing inventions which have

a different appearance than the patented invention, but which use generally the same

components or principles of operation. In contrast, a design patent protects the appearance

of an invention regardless of its structure or operation, and is valuable where other

inventions must have the same appearance to be competitive.



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A. What is a Patent?

A patent is a grant by the federal government of certain exclusive rights to an invention for

a limited period of time, generally the rights to prevent others from making, using, or marketing

the invention throughout the United States and its territories. In return for an inventor’s full

disclosure in a patent application of how to make and use the invention, the government will grant

the patent to the inventor (or to others designated by the inventor) provided certain conditions are

met. When the patent is granted (or sometimes prior to grant), the government makes the

disclosure of how to make and use the invention available to the public. Thus, the public may

learn how to make and use the invention from the disclosure, but it is prohibited from actually

making, using, or marketing the patented invention until the patent expires. A patent is therefore

founded on the concept of a trade between the government and the inventor: if an inventor

benefits the public by telling it how to make and use an invention, the inventor will be rewarded

with exclusive rights in the invention for a limited period of time (during the life of the patent).

The term "patent," or "letters patent," is also used to refer to the granted patent application

document. The patent document describes how to make and use the invention, and it sets forth

claims which define the invention for which exclusive rights are secured. If someone then makes,

uses, or markets the claimed invention without the patent owner’s authorization, they are said to

infringe the patent, and they can be ordered by a court to cease infringement and/or pay damages

to the patent owner. The United States Patent and Trademark Office (USPTO) is the government

agency assigned to determine whether a patent should be granted to an inventor. Issues of patent

infringement are then determined by the federal courts.

B. Why Get a Patent?

Patents can provide a number of advantages to their owners, with some of the more

important advantages being as follows:

Competitive Advantage. If an invention is patented, the patent owner has the right to keep

competitors from making, using, or marketing the invention until the patent expires. This includes

the right to prevent infringing imports, which may be a concern for inventions that can be more



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cheaply manufactured outside the United States. Thus, a patent can secure the market in an

invention for the sole benefit of the patent owner (or others chosen by the patent owner). In

contrast, if an invention is not patented, competitors are allowed to freely copy it, regardless of the

time, effort, and creativity needed to develop the invention, or its importance to the developer’s

business.

Secured Property Assets. A patent is a form of personal property, and can be treated as

such in business and financial transactions. The patent rights – the rights to make, use, and market

the invention – can be assigned (sold) or licensed (leased), either together or separately, in

exchange for a lump sum and/or ongoing royalties. On the other hand, without a patent, a business

owner may effectively have no “property” in an invention to sell or lease, save for inventory and

manufacturing equipment. A patent can therefore secure an invention as property which can be

sold, rented, and/or maintained on a balance sheet as a business asset, thereby increasing the net

worth of a business.

Revenue Generation. Since patent rights may be assigned or licensed, they can provide

income to the patent owner from others’ exploitation of the invention. Without a patent, there is

no right to preclude others from copying, and thus there is generally no way to generate income

from an unpatented invention except by one’s own manufacturing and marketing efforts.

Protection and Recovery of Investments. Some inventions incur substantial research and

development costs. A patent may effectively protect these investments since it can prevent

competition from “free-riding,” that is, simply copying the invention and placing it on the market

without incurring similar start-up costs. Additionally, since a patent owner can collect royalties

from competitors who deal in the invention, the patent owner may be able to recover not only its

development costs, but a profit as well.

Defensive Use. A patent can sometimes be useful to prevent competition from patenting

an invention “over you” and thereby preventing you from using an invention. It can also provide

leverage in the event of a competitor’s lawsuit by creating grounds for a countersuit for patent

infringement, and/or it may allow the lawsuit to be settled by offering the competitor a license to

use the patented invention on specified terms.



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However, it must be remembered that the decision to pursue a patent is ultimately a

business decision, not a legal decision. Since a patent effectively amounts to a “private federal

law” for the benefit of the patent owner, the United States Patent and Trademark Office (USPTO)

will carefully examine each patent grant, making a patent expensive and time-consuming to obtain.

There is no guarantee that a patent will generate money equivalent to the cost of obtaining the

patent. While some individuals and companies make millions of dollars through the licensing,

sale, or exploitation of their patents, patents are as subject to the whims of their market as any

other form of property. Nevertheless, despite the uncertainty of a patent-related payoff, over

100,000 patent applications are filed every year.

C. Types of Patents and the Rights They Provide

There are two main types of patents: utility patents and design patents. Each is discussed

in greater detail below. There is also a document known as a provisional patent application, which

is sometimes mistakenly called a “provisional patent” and which is not in fact a type of patent; it

is best regarded as an unfinished utility patent. Because of the importance and widespread use of

provisional patent applications, these are also discussed below.

C.1. Utility Patent: Purpose and Patent Term

A utility patent protects the structural and/or functional features of products and processes

that make them useful. Utility patents are the most common type of patent, and therefore this

paper generally discusses topics related to utility patents. However, the principles applying to

utility patents also apply in large part to design patents.

A utility patent owner has the right to prevent others from making, using, or marketing the

patented invention in the United States and its territories without the owner’s consent. In effect,

it can provide a “monopoly” on the invention so that a patent owner can deal in the invention

without competition. However, the utility patent monopoly does not last forever: it starts on the

day that the utility patent is granted by the United States Patent and Trademark Office (USPTO),

and generally lasts for 20 years from the date that its utility patent application was filed in the

USPTO. Different utility patent applications can result in utility patents having different terms of



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protection because after an application is filed in the USPTO, the time required by the USPTO to

grant the patent can vary. The longer the USPTO needs to process the patent application (as

discussed at Section G.8, page 17), the shorter the term of the resulting patent. However, certain

provisions of the patent laws usually prevent a patent from having a term of less than 17 years.

In certain rare cases, patent terms may be extended beyond the time periods described

above. Examples of situations where terms might be extended are where the patented invention

is subject to government regulatory approval (for example, if the Food and Drug Administration

needs to approve a patented drug before it goes to market), or where it is subject to a secrecy order

due to national security concerns.

C.2. Design Patent: Purpose and Patent Term

A design patent is directed to the decorative or aesthetic design of a device or object – to

how an object looks, rather than what it does or how it does it. To compare and contrast design

and utility patents, a utility patent generally protects the structure and/or function of an invention

without regard to what the invention looks like, whereas a design patent generally protects the

appearance of an invention without regard to what the invention does or how it works. Since a

design patent is directed to the appearance of an invention rather than its function, it is usually the

best type of patent to obtain when the invention’s appearance is a valuable feature; for example,

design patents are common for furniture, architectural designs, and the like, since the appearance

of these inventions is often their selling point. However, if the selling point of the invention rests

in its function or purpose, and if this can be achieved in an invention that functions similarly but

looks different, it is generally more valuable to obtain a utility patent. Where both function and

appearance are important, it is sometimes possible to obtain both utility and design patents for the

same invention.

A design patent gives its owner the same rights conferred by a utility patent (the rights to

exclude others from making, using, or marketing the claimed invention throughout the United

States and its territories). However, these rights always last for 14 years, starting on the day that

the design patent is granted by the United States Patent and Trademark Office (USPTO).



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C.3. The Provisional Patent Application: An “Unfinished” Utility Patent

A provisional patent application is sometimes called a “provisional patent,” but this is

erroneous because it does not provide any patent rights. It is also sometimes called a “provisional

application,” which is more accurate because it is in fact a type of patent application, more

specifically a type of utility patent application. If a provisional application is filed, it remains in

existence for one year. During this year, a utility patent application must be filed if patent rights

are to be secured. The provisional application does not by itself issue as a patent or provide any

right to prevent copying.

So if a utility application must always be filed after a provisional application to secure

patent rights, what good are provisional applications? To answer this question, it’s important to

consider that an applicant for a utility patent is essentially asking the government for a “private

law” that prohibits the public from dealing in an invention. Because a utility patent can effectively

grant a monopoly in an invention, a utility patent application must meet rigorous legal standards,

making it time-consuming and expensive to obtain. However, in some cases, applicants may be

unsure whether they want to incur all of the patent expenses, and they may need further time to

make a decision. In other cases, the invention may be under development and may not yet be

“ripe” for patenting.

The provisional patent application addresses these concerns. It does away with many of

the formalities of a utility patent application, and may generally be filed at significantly lower cost

because it only needs to contain certain key elements of a utility patent application. After the

provisional application is filed, the United States Patent and Trademark Office (USPTO) keeps

it pending for one year, during which time the applicant may promote the invention as “patent

pending.” During this year, an applicant has the option to “convert” the provisional application

to a utility patent application by adding all missing legal requirements and refiling the provisional

application as a utility patent application. If this is done, the utility patent application will be

considered to have an effective filing date equal to that of the provisional patent application. As

will be discussed later, patentability often hinges on the invention’s priority in comparison to all

prior inventions – its “newness” – so this earlier effective filing date can be critical to patentability.



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However, while the 20-year term of a utility patent is generally measured from its patent

application filing date, the earlier effective patent application filing date provided by a provisional

application does not count against the term of any later-granted utility patent. Its term will still

generally be measured 20 years from the actual filing date of the utility patent application, rather

than from the filing date of the provisional patent application. In effect, the provisional application

provides up to a year of “free” patent pending status which does not count against a utility patent’s

term.

On the other hand, if the provisional patent application is not refiled as a “full” utility

patent application during the year that the provisional application is pending, the USPTO abandons

the provisional application – it discards it – and no benefit can be obtained from it.

In summary, a provisional application allows one who is considering a utility patent to

quickly and inexpensively secure a priority filing date and start the patent process, while "buying

time" before deciding whether to proceed with a utility patent application. Many inventors use

provisional patent applications to gain up to a year to seek investors or other financial backing, and

to perform market research and further product development, before deciding whether to incur the

substantial expense of the utility patent application process. However, it must always be

remembered that a provisional application does not provide the monopoly rights conveyed by a

utility patent. While it provides “patent pending” status (just as a utility patent application does),

the designation “patent pending” is just a warning to others that a patent may be granted soon.

This may deter competitors from copying an invention, but an applicant cannot sue to prevent

copying until a patent is actually granted. Additionally, it should always be kept in mind that a

provisional patent application is not a necessary step in seeking a utility patent. It is merely an

option that inventors may use in the course of seeking utility patent rights. If the invention is fully

developed and ready for patenting, and one is certain that a utility patent is desired, it is preferable

to simply file a utility patent application; a provisional patent application will only delay the

patent grant and add expense.



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D. Requirements for Patentability

While there are many requirements for patentability, four are particularly important: an

invention must (1) involve patentable subject matter, (2) be useful, (3) be novel, and (4) be

unobvious. Each of these requirements is discussed below.

D.1. Patentable Subject Matter (Is the Invention Appropriate for Patenting?)

Only items and processes which are made by or with the assistance of human action are

patentable. Thus, matter such as newly-discovered scientific principles, and items found in nature,

are not patentable because they are not regarded to be created by humans (even if first discovered

by humans). However, if one develops a new process for making an item which is already found

in nature, the process may be patentable. Similarly, while a scientific principle may not be

patentable by itself, an application for a scientific principle may be patentable – for example, one

cannot patent gravity, but a new use for gravity in a manufacturing process may be patentable.

Stated broadly, so long as matter is developed with human intervention, the matter may be suitable

for patenting.

Nevertheless, for many years, certain types of “man-made” matter was regarded by the

United States Patent and Trademark Office (USPTO) as being inherently unpatentable, such as

methods of doing or conducting business, and inventions consisting solely of printed material

(such as a novel or painting). Business methods are now regarded as being patentable, but the

USPTO subjects them to greater scrutiny before deciding whether or not to grant a patent. Printed

matter is still generally regarded as being unpatentable unless it embodies some underlying process

involving interaction with the printed matter; for example, new types of playing cards may be

patentable if they represent a new type of game. However, if printed matter does no more than

communicate a message which is intended to be conveyed to people without implementing some

form of process (apart from a thought process), it is probably unpatentable, though it may be

subject to protection by copyright.

Many inventors wonder whether inventions which are merely ideas can be patented, or

whether the invention must be physically constructed or put into use before a patent application

can be filed. In general, an invention can be patented without physically making or using it, so



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long as the invention can be sufficiently described in a patent application that others can make and

use it.

D.2. Utility (Is the Invention Useful?)

The utility requirement is easily met: all that is required is that the invention have some

identifiable "real world value." As a practical matter, almost every invention meets this standard,

even if its only value is amusement value. An example of an invention which lacks utility is a

newly-synthesized substance which has no known use.

D.3. Novelty (Is the Invention New?)

Broadly considered, the issue of novelty focuses on whether the invention is new. Novelty

can be regarded as having two aspects. The first aspect of novelty focuses on whether the invention

was known before the patent applicant invented it, and states that an invention is anticipated – it

lacks novelty – if it was:

(a) known, made, or used by others in the United States prior to being invented by the

inventor,

(b) described in a printed publication (including a patent) in the United States or a foreign

country prior to being invented by the inventor, or

(c) the subject of a United States patent application which was filed by another party prior to

being invented by the inventor (provided this prior patent application is actually granted

as a patent).

The first aspect of novelty is determined by the United States Patent and Trademark Office

(USPTO) on the basis of what is called the prior art of others – inventions, patents, or publications

which pre-date the invention.

The second aspect of novelty relates to the inventor's acts, rather than whether the

inventions of others were earlier. This second aspect of novelty states that an invention will not

be considered novel if the inventor performs any of the following acts:



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(d) markets or publicly (nonconfidentially) uses the invention in the United States more than

one year prior to applying for a United States patent (though these acts may be excused if

there is clear proof that they were done solely for experimental purposes, to perfect the

invention),

(e) describes the invention in a printed publication more than one year prior to applying for

a United States patent,

(f) receives a granted patent on the invention in a foreign country prior to applying for a

United States patent (provided the foreign patent's application was filed more than one year

prior to applying for the United States patent), or

(g) the inventor waits an unreasonably long period to apply for a patent on the invention after

the invention is developed.

If any of these acts occurs, the invention is cast into the prior art, and will therefore count against

any later-filed patent applications (including those filed by the inventor). This second aspect of

novelty basically imposes a diligence requirement: inventors should file for patents on their

inventions as soon as possible after they are invented.

It is notable that the foregoing requirements (d) and (e) are some of the most common

grounds for denial of a patent. Thus, it should be kept in mind that if information about an

invention is published, or if an invention is marketed, or if an invention is used before observers

without a definite obligation that they keep the invention confidential, these acts may start the

running of a one-year “grace period” in which a patent application must be filed, or else

patentability may be lost.

D.4. Unobviousness (Is the Invention an Evident or Logical Development?)

For an invention to be unobvious, the prior art must not suggest that the invention would

be usefully and successfully made. Stated simplistically, the key issue is whether the prior art

provides any clear motivation to one of ordinary skill in the technological field of the invention

to modify prior inventions, or to combine features of prior inventions, to produce the invention for

which a patent is being sought. The issue of obviousness is legally very complex, and is often the

issue most critical to the grant of a patent.



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E. Inventorship: Who “Conceived” the Invention?

In the United States, a patent application for an invention can only be filed in the name(s)

of the true and first inventor(s). Thus, even if an employer or another party gains rights to an

invention by an assignment contract or license agreement, the patent application must still be filed

in the name of the true inventors. Correct designation of inventors is critical because a patent can

be invalidated if the inventors are improperly named. Inventorship should therefore be addressed

without regard to considerations such as who paid for invention development, who has seniority,

or who ranks higher in the chain of command: only the true inventors must be named in a patent

application.

Inventorship is considered to occur when a person is the first to conceive the invention.

Conception occurs when one has thought of not only the ultimate result to be accomplished by the

invention, but also the means to achieve the desired result, such that only ordinary skill would be

necessary to take the idea of the invention and construct or perform the invention. Stated

differently, if one has developed such a complete idea of the invention that it could be made

without the need for extensive research or experimentation, conception has occurred and the

conceiving party is an inventor. Thus, one cannot become an inventor by suggesting a desired

result unless they also suggest a way to accomplish that result. One also cannot become an

inventor by merely following the instructions of the person(s) who conceived the invention in

order to construct it.

It is possible (and common) to have two or more inventors for an invention. Joint

inventorship occurs when two or more collaborators each contribute to an invention’s conception:

each contributes something to the concept of the final invention, as it is to be patented.

F. Priority of Invention: The First Inventor Gets the Patent

As previously noted, only the first inventor(s) of an invention are entitled to a United States

patent. Thus, if two parties independently invent the same invention and each files for a United

States patent, only one patent will be awarded. The patent will go to the party who has priority

of invention – the party who was the first to conceive the invention – so long as that party:



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(a) was reasonably diligent in reducing the invention to practice – in other words, placing the

invention in working form, or at least perfecting the concept of the invention to such a

degree that a patent application could be filed; and

(b) did not suppress the invention (deliberately hide it from the public eye or unreasonably

delay in disclosing it or applying for a patent).

If these conditions can be proven to the U.S. Patent and Trademark Office (USPTO), the party

who was first to conceive will get the patent even if the second party was the first to file a patent

application or reduce the invention to practice. However, if any disputes arise, the party who first

filed its patent application will be presumed to be the first to invent. A later filer will be forced

to present conclusive proof of prior conception and diligent reduction to practice if it is to win the

patent over the first filer. Since this can be difficult, it is best to file a patent application as soon

as possible after an invention is developed. It is also valuable to carefully document the

development of an invention so that prior conception and diligent reduction to practice can be

proven if someone else files to patent the invention first.

F.1. Proof of Priority: Recordkeeping

Because it may later become important to prove the date(s) of conception and inventorship,

the inventor should make ongoing detailed records of the invention, including drawings and

written descriptions. As these records are created, they are preferably signed and dated by

witnesses who understand the invention (and who will keep the invention in confidence). All

records should be carefully preserved in a safe location.

F.2. Proof of Priority: Disclosure Document Program

The United States Patent and Trademark Office (USPTO) has a Disclosure Document

Program which assists in maintaining proof of priority of invention (in other words, proof of the

dates of conception and reduction to practice). If properly filed, the USPTO will accept and

preserve invention records for a two-year period, and will thereafter continue to preserve the

papers if a patent application is filed within the two-year period. These Disclosure Document

papers may serve as evidence of the date(s) of invention in the event a dispute arises between

competing patent applicants. However, the papers do not serve as a patent application, nor do they



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provide any rights to prevent others from copying the invention; they are only useful if a patent

application is filed within the two-year limit. The Disclosure Document program has decreased

in popularity in recent years, with many parties preferring to simply file a provisional patent

application to protect their priority rights (see Section C.3, page 7).

F.3. Priority May Not Protect Against Infringement Liability

It is important to note that priority of invention is primarily relevant to who gets a patent,

and being “first to invent” will generally not by itself provide a defense against patent infringement

charges. If someone else obtains a patent for an invention that you developed first, they will

usually be able to enforce the patent against you unless your invention constitutes prior art against

their patent (as discussed in Section D.3 at page 10), and you can successfully convince a court

that the patent should be invalidated in view of the prior art – which can be a difficult and

expensive task. Stated differently, priority of invention (and proof of priority) may not be of

significant value unless one seeks a patent.

G. The Patent Application Process

G.1. Who Can Apply For A Patent

Under the law, a patent application can only be filed in the names of the true inventors,

though the filing can be authorized by their employers or other parties having rights to the

invention in question. Because patent law is complex and highly specialized, patent attorneys are

usually retained to do the filing. Patent attorneys are licensed attorneys who have engineering

degrees or other technical backgrounds, and they are required to pass a special federal examination

in order to gain registration as a patent attorney. Non-patent attorneys are not allowed to file

patent applications unless they are also inventors.

G.2. Getting Started with the Application Process

In order to get started on a patent application, a patent attorney needs to have at least a

general idea of how to make and use the invention and the inventor's notion of its novel (new)

features. A written description of the invention, plus drawings and/or photographs, is helpful. It

is also useful if the patent attorney is provided with any information regarding prior inventions



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which have features which are the same or similar to those features which make the new invention

valuable. Copies of advertisements, magazine articles, or other printed matter which describes

these prior inventions are particularly valuable.

G.3. The Patentability Search

Before a patent application is drafted, it is sometimes useful to perform a patentability

search in the prior art records of the U.S. Patent and Trademark Office (USPTO) to locate patents

involving technology similar to the invention. The search results can help a patent attorney

determine whether an invention meets the requirements for patentability, especially the novelty

and unobviousness requirements. The search results can also be extremely helpful to the patent

attorney when formulating strategies for drafting a patent application.

Additionally, patents discovered in the search can help a prospective patent applicant form

an initial impression of whether the invention may actually infringe preexisting patents. If it

appears that an invention may be covered by one or more patents, a patent attorney can obtain the

history of these patents from the USPTO and perform a full infringement analysis (see Section H

at page 21).

Search results can also be useful to an inventor for refining an invention. If the search

results illustrate useful features or functions which the inventor did not previously consider, the

inventor may be able to use them in his/her invention, and may even be able to patent the use of

these features depending on the circumstances.

Finally, the search results can be submitted to the USPTO for its use in examining a patent

application. In fact, as discussed in Section G.9 (page 19), the inventor is legally required to

submit search results with an application if they contain any prior art that the USPTO may

consider relevant. The greater the amount of prior art considered by the USPTO during its

examination of the application, the stronger any patent granted from the application will be.

Patentability search results are not infallible. The records provided by the USPTO for

searching are often incomplete, and thus it is possible that relevant prior art may be missed. The

relevant prior art may then later be found by the USPTO's Patent Examiners when they examine

the patent application, and can be asserted against patentability. Additionally, there are tens of



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millions of prior art patents worldwide, and a patentability search can naturally only cover a small

portion of these patents if it is to be done at an affordable cost. Nevertheless, a patentability search

is still a good and relatively inexpensive way to estimate the prospects of obtaining a patent on the

invention.

G.4. Drafting the Patent Application

A patent application contains a written description of the invention which is sufficiently

detailed that a person of ordinary skill in the technological field of the invention could make and

use the invention. Additionally, the application cannot conceal valuable details: it must set forth

the best way known to the inventor for making and using the invention. The application must

include any drawings that are necessary to understand the invention.

The application concludes with one or more claims which define the features of the

invention for which exclusive patent rights are sought. It is important to realize that different

patent claims can provide different degrees of protection depending on the manner in which they

are drafted. As an example, a broad claim might prevent others from copying not just the

preferred version of the invention, but also any other inventions having the same uses, even if

these other inventions have radically different components, appearances, and principles of

operation. A narrow claim defines an invention in precise detail, and may allow others to easily

develop noninfringing substitutes by merely changing a few nonessential features. Since a

broadly-claimed invention is harder for others to copy without committing infringement, broad

claims generally increase the value of a patent.

Once the application is prepared, the inventor reviews it to see that it completely and

accurately describes the invention. When satisfied, the inventor must execute a Declaration, an

oath verifying that he/she is the true inventor, and acknowledging the inventor’s Duty of Disclosure

(see Section G.9, page 19).



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G.5. Filing the Patent Application in the USPTO

After the Declaration is executed, the patent application is filed in the United States Patent

and Trademark Office (USPTO) with a fee. Filing the application provides patent pending status,

but does not give the applicant the right to prevent others from making, using, or marketing the

invention. This only occurs when a patent is actually granted. The “patent pending” notation can

nevertheless be placed on the invention to warn others that a patent is expected.

G.6. Confidentiality of Patent Applications

Except in unusual circumstances, the USPTO is obligated to keep all patent applications

in secrecy until the patent application is published (see Section G.10 at page 19), or until a patent

is issued. Thus, an applicant need not worry about the USPTO providing information to

competitors.

G.7. Small Entity Status and USPTO Fee Discounts

During the patent application process, the United States Patent and Trademark Office

(USPTO) will give a 50% discount on government fees if all rights in the invention are held by

a small entity. Small entity status applies if:

(a) No rights to the invention are held by a “large entity” – any for-profit or noneducational

company having over 500 employees worldwide (including the employees of any parent,

subsidiary, or other affiliated companies); and

(b) The party or parties who hold rights in the invention are not under any obligation to

transfer rights to a large entity.

Thus, once rights in the invention are sold or even licensed to a large entity, full USPTO fees must

be paid.

G.8. Prosecution (Examination) in the USPTO

After the application is filed, it undergoes examination by the United States Patent and

Trademark Office (USPTO). This process is also called prosecution – an appropriate term, since

the USPTO essentially places the application on trial. The USPTO assigns processing of the

application to a Patent Examiner, who conducts his/her own search of the prior art and evaluates



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the application’s claims against the requirements for patentability. If the claimed invention meets

the requirements, the USPTO sends a Notice of Allowance and examination stops.

On the other hand, if the claimed invention fails to meet one or more requirements, the

USPTO sends an Office Action which rejects one or more claims. The USPTO then allows the

filing of a Response, which may present arguments against the rejections and/or claim

amendments which distinguish the claimed invention from the prior art found by the USPTO.

After the Response is filed, the USPTO again examines the patent application and sends

either a Notice of Allowance or another Office Action (for which another Response can be filed).

The examination process therefore involves repeated rounds of Office Action and Response until

examination is terminated by a Notice of Allowance.

It is extremely common for a patent application to go through at least one round of Office

Action and Response during examination, particularly if the patent claims are broad. The USPTO

wishes to reward inventors of valuable inventions with patent rights, but it also wants to protect

competition from burdensome patent monopolies. Thus, it takes an aggressive stance when

evaluating the claims versus the prior art. Also, because broadly-claimed inventions skirt the

boundaries of novelty and unobviousness, it is typical that their claims face rejection, at least in

the initial Office Action. An applicant should therefore expect to go through at least one round

of Office Action and Response, and be aware that several rounds may occur – and each round can

be burdensome and expensive. In general, a broader patent takes more time and expense. One

can generally obtain a Notice of Allowance more quickly if the claims are narrowed, but this can

sacrifice quality.

Starting with the second Office Action, the Examiner may make the Office Action and the

claim rejections "final." A Final Office Action essentially means that the USPTO feels that it has

fulfilled all of the examination duties that it is legally required to perform, and it will not issue a

Notice of Allowance unless the applicant immediately meets all patentability requirements. If the

applicant feels that any remaining claim rejections are erroneous, the rejections can be appealed

to an oversight board known as the Board of Patent Appeals and Interferences. Alternatively, the

USPTO will perform further examination if the applicant pays the USPTO for additional rounds.



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Examination takes a long time, though one can sometimes apply for expedited examination

if special circumstances are present and/or additional fees are paid. In general, it takes 1-2 years

to obtain a Notice of Allowance.

G.9. The Duty of Disclosure to the USPTO

After a patent application is filed, the inventors, their attorney, and all other parties

participating in the application process are subject to a duty of disclosure to the United States

Patent and Trademark Office (USPTO). This means that they must inform the USPTO (via their

patent attorney) of all known prior art which might be regarded as relevant to patentability. Thus,

if the foregoing parties know of any prior inventions using structures or operational principles

similar to those of the invention in the patent application, or any prior inventions which may share

important features with the invention in the patent application (even if these prior inventions are

overall dissimilar to the invention in the patent application), these prior inventions should be

brought to the attention of the patent attorney. Failure to comply with the duty of disclosure can

lead to patent invalidation and other harsh penalties.

G.10. Publication of the Patent Application

Under relatively new provisions of the patent laws, the United States Patent and Trademark

Office (USPTO) now publishes most utility patent applications eighteen months after their earliest

effective filing date. This effective filing date may be the filing date of any prior provisional

patent application, or if no provisional application is involved, the actual filing date of the utility

application. While publication is usually not mandatory, there are only two ways to avoid it:

(a) abandon the application at least a couple of months prior to the scheduled publication date

(which is a drastic step since it will negate patenting); or

(b) upon filing of the utility patent application, certify to the USPTO that no applications to

patent the invention will be filed in any foreign country that publishes patent applications.

However, since almost all developed foreign patenting countries have a publication

program, any foreign filing of a patent application will probably require that the USPTO

publish the United States application.



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The decision of whether or not to allow publication of the patent application should be

carefully considered. Publication raises costs because the USPTO will charge additional

publication fees once the application is granted as a patent. Additionally, publication exposes the

invention to potential competitors, who may then start attempts to develop noninfringing

substitutes to the invention. On the other hand, publication can be advantageous insofar as a

patentee may be able to collect damages for infringement of the claims of the published

application, provided the claims proceed from publication to patent grant without any substantial

changes. However, since this very rarely occurs, one should assume that damages will only be

available from the date of patent grant, rather than publication. Publication can also make the

application serve as prior art against any competitors that may seek to patent the same or similar

inventions, and thus it can hinder competing patents that may interfere with your business.

Because of the ramifications of publication, many applicants choose to request that their

applications not be published when they file their applications in the USPTO. If they later decide

to make foreign patent filings, the request can be withdrawn and the application will be published.

G.11. Issuance (Granting) of the Patent

If the application is “allowed” (if a Notice of Allowance is sent), the Applicant must pay

an issue fee to the United States Patent and Trademark Office (USPTO) for the application to issue

as a patent. The USPTO may also charge additional fees (such as the publication fee) or require

the filing of additional papers, but in general, the Notice of Allowance signifies that a patent will

be granted within 1-4 months after the issue fee is paid. Owing to the length of the examination

process, a granted patent is generally not obtained until 1-3 years after the patent application is

filed.

G.12. Patent Marking

Once a patent is granted, the patent owner should mark any patented items with a notation

that the item is patented, listing the patent number. If the patented items are not marked in this

manner, an infringer will only be liable for infringement damages which arise after the date the

infringer is provided with specific notice of the patent.



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G.13. Maintenance Fees

To keep the patent in force after the patent is granted, maintenance fees must be paid to the

United States Patent and Trademark Office (USPTO) after 3 ½ years, 7 ½ years and 11 ½ years

from grant. Design patents are not subject to maintenance fees.

H. Infringement

It constitutes infringement to make, use, or market an invention claimed in a patent without

the patent owner's permission. To determine infringement, the item or process accused of

infringement is carefully compared to the matter described by the patent claims. If the patent

claims describe the accused matter, or if the accused matter is insubstantially different from the

matter described in the patent claims, the maker, user, and/or seller may be liable for infringement.

While the infringement analysis focuses primarily on the patent claims, it is also necessary for

patent attorneys and courts to examine the remainder of the patent, as well as the patent file

generated by the United States Patent and Trademark Office (USPTO).

Most competitors try to avoid patent infringement because it can subject them to liability

for their profits and the patentee's damages, and the patent owner may be awarded up to three

times these amounts if infringement is found to be intentional. Most infringement problems can

be resolved with a cease-and-desist letter from a patent attorney to the infringer. However, if

requests to cease and desist are unsuccessful, the patent owner must bear the expense of suing the

infringer in federal court. Patent owners residing or doing business in Wisconsin have the valuable

advantage that the Wisconsin federal courts are among the fastest and least expensive in the

country for resolving patent disputes.

If you suspect someone is infringing your patent, or if you are accused of infringement,

contact a patent attorney before initiating any further contacts with the infringer or accuser. This

is important because the manner in which the infringer was given notice of infringement, and the

infringer’s actions after such notice, have a major effect on liability and damages.



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I. A Patent Does Not Necessarily Mean a Patentee can Exploit the Invention

Note that a patent does not provide a patent owner with an absolute right to make, use, or

market an invention. It is a subtle point that all patents grant exclusionary rights: they prohibit

others from doing certain acts relating to the invention, but they do not necessarily allow the patent

owner to do these acts. Whether or not a patent owner is allowed to do these acts may depend on

other laws. As an example, a new drug might require approval by the United States Food and

Drug Administration, or a new weapon might require special permits or other approval.

I.1. A Patent Does Not Necessarily Provide Immunity from Infringement Liability

More surprising to many patent owners is that their ability to make, use, or market their

patented invention may be affected by prior patents. Many people assume that getting a patent

provides immunity from patent infringement liability if they make, use, or market their invention.

While this is generally true, it is not necessarily so. Whether an invention is patentable depends

on how the invention compares to the prior art (all prior inventions). In contrast, whether an

invention infringes depends on whether it is covered by the claims of an unexpired patent. Since

these are different analyses, and can have different results, patentability does not necessarily mean

noninfringement.

To illustrate, someone could invent a computer with new and unobvious features, and could

thus get a patent for these features. However, if the computer incorporates other features or

components which have already been patented by others, the computer may be infringing the prior

patents. For example, a patented computer which uses an electrical plug patented by someone else

may infringe the plug patent even though the computer is itself patented. Of course, if the plug

was sold to the computer manufacturer with the permission of the owner of the plug patent, use

of the plug in the computer is not infringing. Thus, if someone makes, uses, or markets an

invention which incorporates components that were sold by authorized dealers, the use of those

components is generally not infringing.

I.2. Clearance (Noninfringement) Searches

Despite the foregoing discussion, the patentability of an invention is usually good evidence

that the invention is not infringing. As a result, if someone wants to put a new product on the



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market and wants to determine whether certain features are infringing, it is reasonable for them

to have a patentability search performed for these features. It is instead possible to perform a more

exhaustive search, often called a “clearance search,” which will verify noninfringement with

greater certainty. However, because clearance searches are far more detailed than patentability

searches – they may need to search out every feature of the invention, rather than just those

features that may be patentable – they are far more expensive. In general, greater certainty leads

to greater cost.

J. Invalidating a Patent

People facing actual or potential patent infringement charges can attack the validity of the

patent in federal court, or sometimes before the United States Patent and Trademark Office

(USPTO). However, the patent will generally be presumed to be correctly granted, and will only

be invalidated if it can be shown that the USPTO was clearly wrong in granting it. Thus, it is

usually far more difficult to invalidate a patent than to obtain one. In general, a patent will not be

subject to invalidation unless it is shown that the USPTO was unaware of critical facts – for

example, a prior patent covering the invention, or other matter demonstrating that the patented

invention is not in fact novel and unobvious.

K. Foreign Patents

When a United States patent is granted, it only prevents others from making, using, or

marketing the patented invention throughout the United States and its territories. If protection of

the invention is desired in any countries outside the United States, it is necessary to file foreign

patent applications covering each country or group of countries in which the protection is desired.

It is usually useful to file any foreign applications within one year from the date on which the

United States application was filed since international treaties can provide valuable advantages if

the foreign applications are filed within this period.

One important difference between patenting in the United States and foreign countries

relates to the novelty requirement (discussed in Section D.3 at page 10). Recall that the United



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States allows a one-year grace period to file for a patent after an invention is marketed or publicly

used. Many foreign countries do not allow this grace period. As a result, any marketing or public

use of an invention in the United States can jeopardize foreign patent rights. Since foreign patent

rights are often as profitable as (or more profitable than) United States rights, it is useful to keep

this principle in mind, and keep the invention confidential at least until the date that a United States

patent application is filed.

L. Licensing and Marketing Inventions

L.1. License and Assignment Agreements

Sometimes patents are sought to allow a patent owner the exclusive right to exploit an

invention, and the owner does not want any other parties to use it. However, a patent owner may

decide to allow others to make, use, or market the invention so long as the patent owner is paid

for these activities. In this case, a patent may be assigned (sold) or licensed (leased) to others for

a lump sum, or for ongoing royalty payments or other things of value. When licensing is used,

licenses may be exclusive (only one licensee has the ability to make, use, and/or sell the invention)

or nonexclusive (several licensees may exercise the patent rights). Since an exclusive license is

generally worth more to a licensee, it generally costs more. However, a patent owner seeking to

license an invention must always consider whether more revenue would arise from granting

several nonexclusive licenses than a single exclusive license.

Many patent owners find the licensing/assignment process confusing because it is much

less structured than the process of obtaining a patent. The patent application process may

sometimes be difficult and expensive, and the legal rules that one must follow to get a patent may

be complex, but at least there are rules. In contrast, the licensing/assignment process is more of

a business transaction than a legal transaction, and there are few rules to be observed. The patent

owner and prospective licensee/assignee (or their attorneys) must simply negotiate the best deal

they can get, and then memorialize the deal in a written agreement. There are generally no

deadlines, predetermined payments or royalty rates, or other guidelines to direct a license or

assignment: the only limitation is that the parties must reach terms to which they can agree. Thus,



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while an attorney can assist in developing the terms of a license or assignment, it is ultimately up

to the parties to come to mutually acceptable terms.

Apart from patents, patent applications (including provisional patent applications) may also

be licensed or assigned. However, since there is no guarantee that a patent application will be

granted as a patent, and it may be uncertain whether broad or narrow claims will result (see

Section G.4 at page 16), businesses are generally far more reluctant to license or purchase patent

applications. Many do not even consider it. Additionally, where a patent application is licensed

or assigned, payments are generally lower than for a granted patent owing to the unsettled status

of the potential patent rights. The further the patent application gets through the examination

process (see Section G.8 at page 17), the better one can estimate whether a patent will be granted

and how strong it will be, and the easier the application will be to license or assign.

L.2. Marketing of Inventions

The question of how to market an invention is also a business issue rather than a legal

issue, so attorneys can’t advise on the “best” or “right” way to do marketing. Many patent

attorneys have contacts with marketing consultants or people working in industry, and these parties

are often more helpful with marketing matters. A few general marketing suggestions follow.

First, keep in mind that a patent is written for attorneys and courts, not for potential

customers, and therefore a patent (standing alone) is usually not a good advertisement for the

invention. Marketing is often far more successful if a patent owner can present a prototype or

demonstration of the patented invention to potential licensees or assignees, or at least provide high-

quality drawings which allow a viewer to clearly visualize the invention and its operation. The

more a patent owner can bring the invention “alive,” the more interest it can generate. If one can

provide samples of the invention to interested parties, videos of the invention and its operation,

or other material which interested parties can keep as a reminder of the invention, this can be

valuable.

Second, while it can be useful to make mailings and distribute papers regarding an

invention, be sure to arrange a meeting or follow-up call so that any questions by interested parties

can be quickly addressed. Often, questions arise with respect to ease and cost of manufacture, any



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ABOUT THE AUTHOR

Craig Fieschko is a patent attorney at the Madison office of DeWitt Ross & Stevens SC, and an

adjunct faculty member at the University of Wisconsin Law School. He holds engineering degrees, and prior

to entering the field of law, he taught in the University of Wisconsin College of Engineering and worked in

industry in research and development. His practice focuses on the acquisition and enforcement of United

States and foreign patents, trademarks, and copyrights. If you have questions after reviewing these materials,

or if you have any suggestions how these materials could be improved, please contact Craig at (608) 395-

6722 (email [email protected]).

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disadvantages of the invention and possible solutions, the target market and its size, and proposed

marketing channels for the invention. Industry trade shows are a useful forum for presenting the

invention to interested parties and addressing their questions on the spot.

Third, government and university resources are often invaluable. Many states and

universities offer programs which assist in marketing, promotion, and small business development

at low or no cost.

One question which often arises when starting marketing efforts is how to identify parties

that may be interested in an invention. Initial leads can usually be generated by reviewing industry

information on the Internet or at a library. Once several parties are identified, one can look up

their Standard Industrial Classification (SIC)/North American Industry Classification System

(NAICS) codes – which are numerical codes assigned to each field of industry – and then look up

the names of other businesses sharing these codes. This process, which can also be performed on

the Internet or at a library, allows one to generate a “mailing list” of potential purchasers.

When contacts are made, it is good to ask each contact whether they know of any other

parties who may be interested in the invention, or who may be able to help with its promotion.

Valuable networks of contacts can be built in this fashion. Some patent owners have done this by

distributing postcards (postage prepaid) in their industries of interest, asking the recipients to write

in the names of any potentially interested parties, and then return the postcards. While only a few

may be returned, this approach can still yield valuable results for relatively low cost and effort.

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