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By Wei Wei Jeang

Q: Can I protect my idea by mailing myself a certified letter?

A: This method of “protection” is often called “the poor man’s patent.” However, it also falls into the category of if it’s too good to be true then it must not be true. The letter may constitute evidence that you had the idea described in the letter on a specific date, but the letter would not enable you to stop someone else from using your invention. Moreover, under the first-to-file rule of U.S. patent law, your reliance on the letter would delay you in getting to the patent office, perhaps losing on the patent foot race.

Q: Isn’t my invention patentable if there is nothing like it out on the market?

A: Patentability is determined by whether the invention is new and unobvious in view of what is already known by the world at large. The market is not a good reflection of what is already known. What is patented or published does not always make it to the market.

Q: You can’t patent software, right?

A: Software is patentable. Whether the patent office agrees often depends on the skills of the patent attorney. An invention that is described or claimed in a way that doesn’t necessarily have to be performed by a computer, such as a mental process, would not satisfy the patentability requirements. Computer software is proper subject matter for both patents and copyright, and careful analysis regarding both forms of protection should be conducted.

Q: I’ve been selling my invention, can I patent it now?

A: It depends on how long you have been selling or offering your invention for sale. If you have been doing it for more than a year, you’re too late. If it’s within a year of you first began offering your invention for sale, you may still pursue patent protection in the U.S., but you may not be able to secure foreign patent rights. If you have been making unobvious and patentable modifications to your invention, you may still be able to preserve some rights in your invention. Consult a patent attorney to assess your specific situation.

Q: I have been telling people about my invention but I made sure they sign an NDA. I am protected, right?

A: U.S. patent law has a one-year statutory bar that bars patenting after any public disclosure of the invention. This includes publication, public use, offer for sale, and sale. 35 U.S.C. § 102. The NDA (Non-Disclosure Agreement aka Confidentiality Agreement) is a good thing to have and would be helpful in showing that the disclosure is not public, but it would not be helpful if the disclosure was for the purpose of selling or obtaining commercial advantage from the invention. If the disclosure was for the purpose of selling the invention, the one-year clock has started to run.

Q: I showed my product at a trade show last year, and my invention is hidden inside, can I still patent the invention?

A: It doesn’t matter. When the inventor or someone connected to the inventor puts the invention on display or sells it, there is a "public use" within the meaning of 35 U.S.C. 102(b) even though by its very nature an invention is completely hidden from view as part of a larger machine or article, if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public. The one-year clock has started to run from that public disclosure date.

Q: My next-door neighbor is a real estate attorney, can he help me get a patent on my invention?

A: An inventor may act pro se and represent himself before the U.S. Patent and Trademark Office, or he may hire a patent practitioner to prepare, file, and prosecute the patent application. A patent practitioner is someone who has a science or engineering education and has passed a special examination.

Q: Do I need to make a working prototype before I can patent my invention?

A: No working prototype is needed prior to applying for a patent. All that is needed is a description of the invention that meets the enablement and best mode requirements of patent law. The enablement requirement means that the invention must be described in the patent application in sufficient detail to teach the invention. The best mode requirement means that the inventor should disclose the best embodiment of the invention and not keep it away from the public. These requirements are intended to enable the broader goal of exchanging, for the limited monopoly provided by the patent, for public knowledge of the invention to advance the state of the art.

Q: I patented my invention since I filed a patent application, right?

A: It is a common mistake to claim an invention is “patented” when it is in fact only “patent pending.” Until the patent application goes through examination and a patent is granted with the issuance of a patent, the invention is not yet patented. The examination process is rigorous and a patent grant is not guaranteed. If what you filed is a provisional patent application, it won't even be examined and must be followed up with a non-provisional patent application.

Q: I just used one of those DIY kits to file a provisional patent application, my invention is protected, right?

A: A provisional patent application is a limited tool. Provisional applications are considered "provisional" because they are temporary. These applications are never examined by the U.S. Patent and Trademark Office, and they will never turn into actual granted patents. A provisional application expires after its one-year anniversary and therefore must be followed up with a non-provisional patent application filing within one year. Furthermore, a provisional application is only as good as what it contains. If an important feature or element is missing from the provisional application, it will not fully support the inventive concept that is later described in the non-provisional patent application.

Q: I filed a provisional patent application, but now I have come up with more improvements to my invention. Can I add to the provisional application?

A: No, you can’t make changes to the provisional application after it has been filed. However, you can file a second provisional application. When you are ready to file the non-provisional patent application, you can claim priority to both provisional patent applications.

Q: I have a patent on my invention, but I received a cease and desist letter from someone for patent infringement!

A: This is sometimes a hard concept to grasp. A U.S. patent gives its owner the right to exclude others from making, using or selling the invention throughout the United States or importing the invention into the United States. But a patent does not give its owner the right to practice the invention. Because a patent can be granted based on an unobvious improvement over an existing thing that is patented, the improvement patentee’s ability to practice the invention is subject to the existing thing patentee’s rights.

This is not legal advice for your specific situation. Please consult an experienced and licensed patent attorney.

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