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Important Patent Information and Definitions

PATENT

A patent has many facets to it. It is highly recommended that an inventor hire a qualified registered patent attorney to execute all patent related items. United Patent Research provides all our clients with qualified registered patent attorneys who perform all services before the USPTO.

The patent process is a system that has many legal terms, conditions, systems and procedures that must be properly followed or else the patent will not be issued. In addition, there are various government fees associated with a patent. The first set of fees the USPTO requires is a combination of a filing fee, a search fee and an examination fee. Another fee is an issuance fee. When an inventor contracts with UPR, filing, search, examination and issuance fees are included with the investment the inventor makes with UPR. In addition, a utility patent has maintenance fees at intervals of 3.5 years: $450.00, 7.5 years: $1,150.00, and 11.5 years: $1,900.00. The inventor will be responsible for maintenance fee payments.

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UTILITY PATENT

A utility patent protects the way an article works or is used and does not protect the way an article looks. It may be granted for a machine, a process, an article of manufacture, a composition of matter, or an improvement thereof. To be patentable, the invention must be new, useful, and not be obvious to a person skilled in the art. However, a utility patent will not be granted on a useless device, on printed matter, on a method of doing business, or on a machine which will not operate, such as a perpetual motion device. A utility patent will last for twenty (20) years from the date of filing when granted (if the Patent Office issues the patent within three years of the filing date; otherwise, any delay caused by the Patent Office is added on to the twenty year term). It is non-renewable. In addition, there are maintenance fees throughout the 20-year term of the patent.

DESIGN PATENT

This patent is quite different. It is issued for any new, original, ornamental design for an article of manufacture. Thus, when a design patent is sought, only the appearance of the item is considered. It protects the way an article looks, and does not protect the way an article works or is used. The term is fourteen (14) years from issuance. It is non-renewable. There are no maintenance fees associated with a design patent.

PROVISIONAL APPLICATION FOR PATENT

This is a relatively new program instituted by the USPTO. It was established in 1995 to help inventors file without a formal claim, oath or declaration, or prior art disclosures. It provides a means to establish an early effective filing date and allows the term patent pending to be applied. It is not a patent. It will last for one year from the date of the application. The inventor will have the right to upgrade to a utility patent before the expiration of the Provisional Application for Patent. It is non-renewable. There is only one fee to the USPTO for filing this application.

EUROPEAN COMMUNITY DESIGN PATENT (EU)

As of April 2004, the Community Design Regulations of the European Nations have provided a vehicle for obtaining a Design Patent type coverage in every country of the European Union (see list of countries attached). The Community Design Registration, (CDR as it is officially called), protects the appearance of a product or part of a product or its ornamentation. It may consist of lines, contours, colors, shapes, textures and/or materials of the product or its ornamentation. A product includes any industrial or handicraft item, including; packaging, set-up, graphic symbols and typefaces. Matter such as smells, sounds or words will not qualify. Also excluded are immoral designs, designs of components that are hidden in normal use and designs that are dictated solely by function. New logos and graphic trademarks can be protected. Cartoon characters can also be protected.

COMMUNITY DESIGN REGISTRATION

The CDR is obtained by filing a single application in the Office of Harmonization in the International Market (OHIM) through a patent office of an EU country. UPR will assign a patent attorney for the client here in the U.S. who in turn submits it to a registered representative who is a member of the Patent Bar of any EU country. Once the filing of the application by the patent attorney is complete, it automatically becomes a Community Design Registration (CDR).

There are no limitations on who may apply for a CDR. The applications are similar to Design Patent Applications in the United States and are prepared in the same manner (drawings, descriptions, etc.). The language is English.

After the Application has been filed, it is reviewed for formal matters. It is not examined for patentability. If the formal matters (such as proper descriptions, designations and representations) are accepted, the application will be formally published and listed. Once the Application is published and issued, the original date of application becomes the official date of filing and the invention is considered EU Patent Pending. After it is officially published, it becomes an official Community Design Patent.

Once published, it will be enforceable against anyone in the EU. It carries the same weight and protection as a Design Patent here in the United States.

The Community Design is effective for five-year periods. At the end of each five-year period, it must be renewed by paying a maintenance fee and is effective for a total of 25 years. As part of our service, the patent attorney and/or our company will send notices to the clients to advise them of upcoming maintenance fees to be paid. The maintenance fee payments are not included in the investment made to UPR and are the responsibility of the client. The fees paid to UPR will include the registration fee as well as the publication fee.

MEMBER STATES (the Member States may change from time to time and the following is not intended to be an exhaustive list):

Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, United Kingdom of Great Britain, Northern Ireland.

As you can see, the European Community Design Patent opens up new opportunities for inventors and should be used for patent protection in the European countries.

CHINA PATENT

The practice of intellectual property law has become increasingly important in China, and this phenomenon is especially reflected in the area of patent law. The number of new patents filed in China recently reached a record high of over 250,000. As one of the world’s largest economies, China has maintained an impressive growth rate of 8% of its GDP.

China is a member of and has ratified the following agreements:

  • Paris Convention
  • Patent Cooperation Treaty (PCT)
  • Convention Establishing the World Intellectual Property Organization (WIPO) Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

Under China’s present Patent Law, patent protection is available in three forms:

  1. Invention Patents — 20 year term
  2. Utility Model Patents — 10 year term
  3. Design Patents — 10 year term

Both the Invention Patent and the Utility Patent listed above are similar to Utility Patents in the United States. The China Design Patent is similar to the U.S. Design Patent. The approval for patent protection in China is subject to the following criteria:

  • Novelty
  • Inventiveness
  • Practical Applicability

Generally, an invention is Novel if, before the date of filing, no identical invention had been publicly disclosed in China or abroad. Inventiveness is defined as an improvement of prominent substantive features and notable progress compared to existing technology. Practical Applicability is defined as an invention that can be made or used to produce effective results.

Here are some of the reasons to have a China Patent:

  1. More and more products are being manufactured in China and other Asian countries at costs well below other countries, especially the US.
  2. China is presently the #1 culprit of intellectual property infringement and piracy. Ninety percent (90%) of all copied products come from China.
  3. The Chinese Government has recently enacted stricter penalties against piracy and has been enforcing them more and more, giving greater confidence to the rest of the world.
  4. With a US, EU and China Patent, you will have the best protection the world has to offer.
  5. As China emerges as a monster capitalistic nation, more and more companies worldwide (large and small) will jump on the bandwagon. The amount of publicity China will be getting (good and bad) will increase ten fold within the next few years. This is a ground floor opportunity for our clients to enter this new Chinese financial revolution with a patent. It is even more important to obtain a China Patent today than it will be five years from now.
  6. The Association of Southeast Asian Nations (ASEAN) is an official Asian organization of countries that jointly promote commerce among them. The ASEAN represents a population of about 500 million people, a total area of 4.5 million square kilometers, a combined domestic gross product of $737 billion and growing, and a total annual trade of $720 billion dollars. The countries include; Cambodia, Laos, Myanmar, Thailand, Vietnam, Brunei, East Timor, Indonesia, Malaysia, Philippines, and Singapore. The ASEAN was officially established on August 8, 1967. Trade relations and agreements of the ASEAN have a direct impact on products manufactured in China, Japan and other countries who are not members.
  7. China presently has the world’s largest economy. To date, exports have been its main engine of economic growth and job creation.
  8. The U.S. currently has a $162 BILLION TRADE DEFICIT with China. That means China exports more to the U.S. than they import.
  9. China currently holds about $600 billion in U.S. treasury securities and other dollar denominated instruments. Experts say this has helped keep our long-term interest rates below what they would have normally been. Therefore, if China were to shift their reserves to other currencies, our long-term rates will begin to rise.
  10. Japan has a major impact on China. Japan is the #1 trade country with China for both imports and exports. Forty years ago, Japan began their capitalistic revolution. Look what they have accomplished! Now it is China’s turn.
  11. China, Hong Kong, Japan and South Korea are major export and import markets for the U.S. While China remains red hot, the other countries, especially South Korea, are struggling to emerge from a period of sub-par growth. This makes China a powerful trading partner.
  12. China’s recent move to un-peg its currency from the U.S. dollar could lead to upward valuation of other foreign currencies against the dollar. This process will ultimately make U.S. exports more competitive in global markets and should create new export opportunities.
  13. The result of having a China Patent will inhibit Chinese manufacturers from making and selling unauthorized products to the US, and the ASEAN countries. This point alone makes having a China Patent extremely important. Combined with a US patent and a EU, you will have global protection in countries having the greatest impact on your product.
  14. China will be making massive financial headlines in the future that will enable you to capture that market. Doing business now BEFORE the China financial explosion is an intelligent business decision, if it is within your financial means.

PATENT SEARCH

An inventor should have a full patent search with a legal opinion of patentability of the official records of the USPTO before seeking a US patent. There are presently over six million issued US patents, and they are classified according to subject matter in one or more of some 125,000 different subject areas. In addition, millions of foreign patents are classified and included in the patent office records. When conducted by a competent professional, the accuracy of the search is ordinarily quite high, but owing to the vast body of available information, no guarantee of complete accuracy can ever be given in a US search. Only a registered patent attorney or agent may give a legal opinion regarding the patentability of the invention in view of the patent art discovered during the search. United Patent Research will assign a registered patent attorney/agent to conduct a full patent search with legal opinion of patentability.

THE U.S. FILING APPLICATION PROCESS

If the patent search and opinion are favorable, the next step is to file an application for a utility, design or provisional application for patent. Once the application is filed, but not before, the inventor may use the phrase patent pending. This tells the public that an application is on file with the USPTO. The improper use of these terms is punishable by law. UPR and the assigned patent attorney/agent will provide all the services required to file the proper application on behalf of the inventor.

Shortly after filing, the USPTO will issue a formal filing receipt identifying the application. The filing application is kept confidential in the USPTO and is not searchable. The inventor can then state Patent Pending.

PATENT SUMMARY

The invention process requires an investment in time, effort and financial resources. It is not a journey to be taken without proper planning or adequate financing. To portray the journey as anything else would be unrealistic or perhaps even dishonest. However, the journey can also be highly rewarding, both in terms of finance and experiences.

Non-patented inventions are more often very difficult to sell or license to companies, especially to large corporations. Inventors who have ideas or inventions worth pursuing should insure that their invention is properly protected.

TRADEMARKS

A Trademark is a word, phrase, symbol or design, or a combination of the above, which identifies and distinguishes the source of the goods or services of one party from those of others. A Service Mark is the same as a Trademark except that it identifies and distinguishes the source of the service rather than the product. Trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. UPR and the assigned patent attorney/agent will provide all the services required to file the proper application on behalf of the inventor.