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Patent Knowledge Base

PPA Basics: The Concept Of Reduction To Practice

The provisional patent application (PPA) is an interim document designed to preserve the patent owner’s rights to the invention while in the process of determining whether to file a regular patent or not. Many inventors file it since it’s a relatively straightforward, simple and affordable way of protecting their rights over and interests in their inventions.

 

Reduction to Practice Defined

It’s the equivalent of the concept of “reduction to practice” typically manifested in two ways:

 

  • By the production of a physical embodiment of the invention, also known as actual reduction to practice. Examples include a prototype of a device, a composition of the matter, and the performance of a method to confirm its results.

 

  • By filing a patent application with the United States Patent and Trademark Office (USPTO), known as constructive reduction to practice.

 

The actual physical construction for a product or the performance of the steps for a process is meant to show others that, indeed, the subject matter being patented can do what it’s supposed to do. The concept of reduction to practice then encompasses actual demonstration, operation and testing for the invention’s actual use.

 

Importance of Reduction to Practice

Every savvy inventor knows that reduction to practice is a crucial element in establishing novelty and non-obviousness in a patent application. You, the inventor, has to provide proof that indeed you are the original inventor of the subject matter and the PPA is a strong proof.

 

The PPA is also important in establishing patent priority and, thus, rightful and legal ownership over the invention. Under U.S. patent laws, the inventor owns the patent registration rights at the time he/she reduced the invention to practice, thus, it’s important for inventors to be the first to apply the reduction to practice doctrine.

 

In contrast, most countries grant patent registration rights to the first person who files for the applicable patent.

 

The reduction to practice concept prevents other persons from stealing, borrowing, and selling prior inventions created by the original inventor even if the latter haven’t filed for a regular patent. The PPA can establish both actual and constructive reduction to practice since it must contain a description and drawings of the invention. The inventor can also include other documents to establish ownership over the invention, such as formal drawings and methods of operation.

 

If the invention’s practical utility isn’t evident, the USPTO examiner may request for a testing and demonstration. You should take it into account when filing for a PPA to establish reduction to practice on your part.

 

A good rule of thumb to remember: The less theoretical, the less abstract and the simpler the invention, the less need for showing practical utility. Brand-new technologies, for example, usually require more proof of utility while there’s little to no demonstration of utility required for improvements on existing technology.

 

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

The Tug-of-war Over Patent Rights Ownership Between Inventor And Employer

Who is the rightful and legal owner of an invention: The employee who invented it or his employer? The answer depends on the agreement between these parties although other factors are also considered.

 

For the inventors, the answer can mean the difference between being recognized – and possibly getting rich – for their inventions and being consigned as a mere cog in the machine. For the employers, it can also mean being recognized as a pioneer and leader in the field on one hand and being left behind by the competition on the other hand.

 

With such high stakes, which side does the law favor?  Take note that patents are articulated under the U.S. Constitution (Article I, Section 8, Clause 8) and governed by the Patent Act.

 

Inventors Typically Have Patent Ownership

The general rule in the tug-of-war between inventors and employers: You, if you’re the inventor, own the patent rights to your invention created during the course of your employment. You can apply for a patent with the U.S. Patent and Trademark Office (USPTO); only a natural person, by the way, can apply for it and, thus, organizations cannot.

 

But there are exceptions to the general rule. You don’t own the patent rights under either of the following circumstances:

 

  • You signed an employment agreement with your employment wherein you assigned invention rights (the doctrine of pre-invention assignment); or
  • You were specifically hired either to create the specific invention or for your invention skills (the work-for-hire doctrine); said employment may or may not come with a written agreement.

 

In practice, either of these two exceptions to the rule nearly always applies. This means that the employers hold patent ownership to their employees’ inventions, a fact reinforced by the signed and notarized pre-invention assignment agreements at the time of the hiring. The assignment agreement typically comes as a bundle, so to speak, with other employment documents like confidentiality agreements.

 

Employers Can Have Shop Rights

Let’s assume that you retained patent ownership over your invention. Keep in mind that it isn’t an ironclad ownership either because your employer can still have shop rights. The term refers to the limited right of the employer to use your patent without paying you, either in cash or in kind.

 

Shop rights occur when you, the employee and inventor, uses your employer’s resources including the machinery, facility and network in creating your invention. The doctrine itself is flexible in its application in the real world but it typically allows your employee the use of your invention internally. Your employer can neither assign nor sell your invention to third parties; otherwise, it can be considered as infringement of patent.

 

If you’re an inventor seeking employment or already in employment, you are well-advised to consult with a patent lawyer about your employment contracts including the assignment agreement. You have to protect your inventions from infringement, even by your employers, if that’s what you want.

 

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Are You The Rightful Owner Of Your Invention For Patent Application?

What would you do if your original idea was stolen by another person or group? But before you answer the question, you have to answer another question, “Do you legally own the patent rights over the product, device or item?”

 

Granted by the USPTO

Everybody has the right to create things. But keep in mind that merely creating a thing doesn’t confer legal rights including ownership over it, even when others have profited from it. You must actually have a valid patent over the subject matter, whether it’s a process or a product.

 

Patents are rights of ownership granted by the United States government, specifically the U.S. Patent and Trademark Office (USPTO) to inventors. The patents are intended to exclude others from making, using, and selling, even importing, the particular inventions without the inventors’ express permission. In case of infringement, the aggrieved inventor can file an infringement lawsuit.

 

If you haven’t submitted your patent application or you haven’t been granted a full patent for the subject matter, then you will likely not be considered as its legal and rightful owner. You can, however, apply for a provisional patent but even it has its limitations so we suggest getting a full patent over your invention.

 

Inventorship and Ownership Are Different

There are also instances that the inventor and original holder of the patent isn’t considered as the owner of the patent. This is because the concepts of inventorship and ownership are different under patent law.

 

You, the inventor, may be listed on the patent application filed with the USPTO but you may not be considered as its current valid owner. You may have relinquished your rights over it, a case that can happen when you work for a company and you created the invention while you were its employee at the time. In this case, you cannot sue for patent infringement since the patent is usually owned by the company.

 

If you were directly paid by another person or group to create an original invention, you may or may not own the resulting patent. You have to double check the agreement before signing it, especially if you want to own the patent while the other party has certain legal rights over the resulting product.

 

And then there’s the matter of being a solo inventor or a joint inventor of a patented idea or thing. If you came up with the idea or created the product completely on your own, then you are considered as a solo inventor. You shouldn’t be anybody’s employee, too.

 

If the idea or thing was created by two or more people, then they are joint owners of the patent. The names of all the inventors can be listed on the patent application and, in the absence of an agreement to the contrary, every inventor own a pro-rated and undivided interest in the invention.

 

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Meeting the Non-obviousness Requirement In Patent Applications

Every inventor worth his salt should familiarize himself with the non-obviousness requirement in patent applications. Otherwise, even a novel and original invention will not be granted a patent by the United States Patent and Trademark Office (USPTO). But what exactly does the USPTO mean by non-obviousness and how can you meet it?

 

But first, we have to emphasize that while novelty and non-obviousness are different in many ways, the two terms often overlap in a practical sense. The reason for it is that both can be measured in terms of the absence of prior art.

 

What Makes an Invention Non-obvious?

Unfortunately, the standards for determining the obviousness and non-obviousness of inventions are as clear as mud. The USPTO patent examiners – and the judges in patent litigations, for that matter – have plenty of leeway in making related decisions, a current reality that inventors should be aware of.

 

If you’re an inventor, keep in mind that it doesn’t necessarily demand genius-like craftsmanship, originality, and vision to create a non-obvious design. In many cases, it only requires the extraordinary ability to visualize ordinary things in a new or different manner.

 

There are times when combining things is easily apparent and there are times when it isn’t. The requirement of obviousness then becomes trickier than it sounds, especially as obviousness itself is both a subjective and objective (i.e., fact-based) inquiry.

 

But there’s a way to determine if your invention meets the non-obviousness requirement. Basically, an invention can be considered as obvious when other persons knowledgeable about the field where it belongs will look at it and consider it to be generally known. The known aspect isn’t exactly known per se but will be known if several references are combined.

 

How Can Non-obviousness Be Demonstrated?

Keep in mind that the inventor has the burden of proof, so to speak, in proving the non-obviousness of his invention. This can be done in several ways including the following:

 

  • Using a familiar shape in an unfamiliar manner
  • Making slight to significant changes to an existing design thereby creating a striking visual effect that others haven’t done before
  • Omitting certain elements generally associated with similar designs
  • Juxtaposing specific elements thereby creating an unexpected statement, whether visual or auditory

 

There are other ways to meet the non-obviousness test, too. If your design has been or continues to be a commercial success; it has unexpected visual appearance; it has been copied by others; it has been praised for its originality by others in the field where its utility is evident; it was copied by others but they were unsuccessful at generating the same results as the invention; or it was created when others said it couldn’t be done.

 

Do these concepts make for more confusion? If you answered yes, then you should consider hiring a patent agent or lawyer or agent with a comprehensive experience in meeting the five requirements of patent approval.

 

For details of the patent applications, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Talk But Protect Your Non-patented Invention

The idea is the heart of the invention. You, the inventor, then must be extremely careful about sharing your novel idea with other people, even with people who can provide assistance to take it from an abstract idea to a real product (i.e., prototype). You should be particularly careful when you haven’t submit your patent application for it yet.

 

Fortunately, there are ways to talk about your non-patented invention and protect it from being stolen by others.

 

Learn the Law

You have to learn the law that applies to patents even before you think about discussing your ideas with every Tom, Dick and Harry who cares to listen. You don’t have to go to law school to understand the patent laws but you should strive to learn the basics, such as the types of disclosures that you can and cannot make while still protecting your idea.

 

You may want to present your idea to a group of angel investors. You may also put it to beta testing so as to test it marketability and profitability. You may want to write a white paper about it. Regardless of what you want to do about your idea, you have to learn the law.

 

Have a Confidentiality Agreement

Also known as a non-disclosure agreement (NDA), a confidentiality makes it clear – and in writing, too, for good measure – between both parties that your invention should be treated as confidential information. As such, the third parties with the privilege to know about it must not disclose or release any information about it to others without your express permission. This is a good idea if you’re talking about it to potential investors, partners, and/or vendors.

 

But remember that an NDA isn’t acceptable to everybody, especially where large investment firms and corporations are concerned. Indeed, you may even be asked to sign an agreement wherein you agree that your idea isn’t a secret at all so the organization has legal protection from liability!

 

Avoid Online Sharing

If you’re the type who likes to share nearly everything about your life online, then you should start cutting back if you have a brilliant idea that can qualify for a patent. When you post your ideas online, whether it’s on your website or on a social media site, you’re exposing yourself to two threats.

 

First, your idea may be stolen by your connections – or by the friends of your friends up to the sixth degree – and then run with it. You may have come up with the novel idea and somebody else profited from or was recognized for it.

 

Second, you’re essentially giving the social media sites where your ideas were posted the right to use it anyway they want. Read Facebook’s Statement of Rights and Responsibilities, particularly on the topic of intellectual property, and you will understand.

 

The best thing to do: File a provisional patent for your invention!

 

 

For details of the patent application, please contact us for free consulation.

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Can You Patent Your Invention?

The short answer: It depends on whether your invention meets the requirements stated by the Patent and Trademark Office. Not all patent applications will be recognized or registered even if the inventors insist otherwise. Not even well-known inventors with dozens, perhaps hundreds, of registered patents are assured that their pending applications will pass the stringent process.

What then can be patented? Let’s take a look at the factors that affect the success of your patent application, among other matters.

 

Four Requirements

According to the U.S. patent law, any individual who discovers, makes or invents any novel and useful machine, process, composition of matter, manufacture, or any novel and useful improvement on them may file for a patent. From the definition, the USPTO will grant a patent right if and when these four requirements are met:

 

  • The subject matter, such as a method or a machinery, should be patentable.
  • It must be new or novel.
  • It must have some usefulness or utility.
  • It must not be obvious.

 

You have to carefully consider whether you, indeed, have a patentable subject matter before filing its patent application. You may or may not be granted the patent but you likely won’t be given a refund if it isn’t granted – and the patent process is costly, too.

 

In terms of novelty, the invention should be new in the sense that it must be different from the existing knowledge in the public domain, in published applications, and from prior patents, among others; these are known as prior art.

 

The utility requirement is met by showing proof that the invention can physically accomplish something. In other words, it should work as the inventor intended or it produces actual results. In reality, the USPTO isn’t likely to challenge the patent based on utility unless its underlying logic has serious flaws.  Exceptions, such as on design patents that don’t need to meet the utility requirement, apply.

 

Concrete Evidence Required

While your idea seems novel, useful and unobvious, it cannot be protected by a patent. Instead, your idea must be embodied in one or more of these concrete manifestations, among others:

 

  • A method or a process, such as a new process for making concrete
  • A machine or machinery, typically with circuitry and/or moving parts (e.g., gears)
  • A manufactured item that accomplished a result with little to no moving parts
  • An asexually reproduced new plan variety
  • A new composition of matter, such as a new drug

 

Does your idea fall into one of these categories? You can’t be too sure even then because there are subject matters that are simply beyond the scope of patent laws. These include naturally-occurring substances (i.e., these cannot be invented); mathematical formulas (i.e., these may be copyrighted instead); laws of nature (i.e., man’s laws doesn’t apply to them); and processes that can be entirely performed with the human body (e.g., fool-proof technique for shooting a ball from the 3-point line).

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

The Types Of United States Patents Explained Briefly

According to the United States patent law, inventors can secure and protect their rights to their works by applying for a patent. The United States Patent and Trademark Office (USPTO) classifies patents into four different types and an inventor can apply for one or two patents, such as a utility patent and provisional patent.

Utility Patent

When people think of a patent, it’s most likely that they are referring to or thinking of a utility patent. Keep in mind that a utility patent is a lengthy technical document with details about the use of a new machine, system, or process. The document can contain descriptions, drawings and images of the invention, a must for its registration.

 

Congress defines the kinds of inventions covered by utility patents. But with Internet-delivered software, the Internet of Things, and genetic engineering, among other emerging technologies, the definition is being challenged.

 

Provisional Patent

Under the patent law, an inventor can file a less formal document as proof that he was in possession of the invention and he had sufficient knowledge of how to make it work (i.e., the utility requirement). This is known as a provisional patent, which goes hand in hand with a utility patent.

 

Let’s say that you filed a provisional patent for your invention. When it’s on file, your patent is considered as pending and you have the applicable property rights to your invention. You should file a formal utility patent within one year from filing the provisional patent.

 

Design Patent

The design patent doesn’t need to meet the utility requirement since it protects decorative design on a utilitarian item. The typical design patent document consists almost entirely of drawings or pictures with a few words and, thus, these are notoriously difficult to search on the USPTO database.

 

This can be applied for a wide range of ideas and items. These include the design for shoes, the shape of a designer bottle, and even user interfaces.

 

Plant Patent

A plant patent is obviously designed to protect new types of plants that have been produced through non-sexual methods, such as cuttings. Emphasis must be made that it generally covers conventional horticulture and not genetically modified organisms (GMOs).

 

You don’t have to be limited to filing a single patent on an invention. You can actually file two patents for a single item!

 

You may file a provisional patent on your invention so you have one year to decide when and how to file its related utility patent.  In doing so, you’re expanding patent protection and mitigating your risk of another person claiming the same or similar invention.

 

Regardless of the type of patent you chose, your main goal is to protect your invention from infringement by others. You will then have a higher chance of getting a good return on your investment once you start profiting from your invention.

 

For details of the patent application, please contact us for free consulation.

 

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services

What Are The Types Of IP Protection right for you?

Patents, copyrights and trademarks are different from each other and each one serves a different purpose. All three, nonetheless, are forms of intellectual property (IP) protection that every individual with an invention, an idea, or a trademark should seriously consider.

Patents Are For Inventions

The United States Patent and Trademark Office (USPTO) issues patents, the grant of property rights to an inventor. In general, a new patent has a term of 20 years from the date when its application for a patent was filed in the United States. In special cases, however, the term starts from the date an earlier related application was filed but the maintenance fees must be updated. Under certain circumstances, the patent holder can apply for patent term adjustments or extensions.

 

The patents filed with the USPTO are only effective within the United States as well as to its possessions and territories. Many, if not most, inventors then apply patents for their inventions in an international body to protect their inventions in certain jurisdictions.

 

The property rights conferred by a patent include “the right to exclude others from making, using, offering for sale, or selling” the item covered in the United States, as well as from “importing” it into the United States. Keep in mind that what’s actually granted isn’t the right to make, use, sell, offer for sale, or import the item but the right to exclude others from doing so.

 

Trademarks Are for Words and Others

A trademark refers to a name, word, symbol or device used in trading products to indicate their source and to distinguish them from others. A servicemark is similar to a trademark but it’s used to distinguish the origin or source of a service, not a product. In most cases, a servicemark can also be called a trademark for convenience purposes.

 

Trademark rights can be used in preventing other individuals and organizations from the use of confusingly similar-looking or similar-sounding marks. But these aren’t intended to prevent others from manufacturing, selling and offering to sell the same products and/or services. For example, McDonald’s has a trademark so it has exclusive use to the brand and its related images but it doesn’t have the right to prevent KFC, Wendy’s and Five Guys to sell burgers, fries and shakes.

 

Copyrights Are for Original Works of Authorship

Copyrights are granted to authors or creators of “original works of authorship” that include but aren’t limited to literary, intellectual, musical, dramatic, and artistic works, both unpublished and published. Under the 1976 Copyright Act, the copyright owner has the exclusive right to his or her work, which can include reproduction of the copyrighted work, distribution of its copies, performance of the work in a public venue, preparation of derivative works, and display of the work publicly.

 

Which IP protection is right for you?

For details of the patent application or trademark registration, please contact us for free consultation.

 

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and

Trademark Application & Related Services

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