Florida Intellectual Property Law Blog

In the movie Any Given Sunday, Al Pacino played a football coach tony D'Amato in a wonderful locker-room motivational speech telling his players to keep playing even when everything seems stacked against them and fight for every inch.  Watch the short 3-4 minute video below first and then lets look into how this is relevant to drafting the claims of a patent.

"An inch can mean the difference between victory and defeat", he said, and if you want to win in football or in life, you have to give it all you have for those inches. 

The Claims of a Patent Represent Intellectual Real Estate

Like a deed in real estate, a patents claims stake out the scope of property protected by a patent.  Claim an invention too broadly and your patent is likely to be rejected.  Draft claims that are too narrow and you are leaving money on the table.  Precision is important but so is aggressive prosection.  A good patent attorney will FIGHT for the absolute broadest protection possible for his clients. 

As aptly stated above in the quote from Al Pacino playing Coach Tony D'Amato, "an inch can mean the difference between victory and defeat".

 Ft. Lauderdale Patent Attorney John Rizvi was selected to join the inaugural class of Florida Board Certified Patent Attorneys approved by the Florida Bar. The Florida Bar is the first state bar in the country to certify attorneys for their expertise in intellectual property law. Board certification evaluates attorneys' special knowledge, skills and proficiency in various areas of law and professionalism and ethics in practice. John Rizvi was approved as a Fort Lauderdale Patent Attorney for his expertise in the area of patent prosecution. John Rizvi co-founded Gold & Rizvi, P.A., The Idea Attorneys®, South Florida patent attorneys with offices in the Dade, Broward, and Palm Beach County, and satellite office locations in Tampa and Orlando. 

"Board certification is a valuable credential that is becoming a significant trend in the legal profession," said Florida Bar President Francisco Angones. "Specialization recognizes lawyers' expertise and professionalism, and is a natural progression for lawyers who can demonstrate high skill levels in particular areas of law."

Certified attorneys are the only Florida lawyers allowed to identify or advertise themselves as specialists or experts. Certification is the highest level of evaluation by The Florida Bar of the competency and experience of attorneys in areas of law approved for certification by the Supreme Court of Florida.

Florida currently offers 22 specialty areas of practice for which board certification is available – the greatest number of state-approved certification areas in the nation.

Intellectual property lawyers practice primarily in the areas of patent application prosecution, patent infringement litigation, trademark law and copyright law. Attorney James A. Gale of Feldman Gale P.A. in Miami chairs The Florida Bar's intellectual property certification committee.

"There are a host of new problems out there for companies and individuals trying to protect customer lists, proprietary data, Web site content, trademarks and slogans because of the complexity of this area of law," said Gale. "As the practice area has grown, so has the public's need to identify legal experts in the field."

Background. The Florida Supreme Court in July 2006 amended Florida Bar rules to add intellectual property law to the existing certification program. The opinion states that standards "identify those lawyers who practice intellectual property law and have the special knowledge, skills, and proficiency, as well as the character, ethics, and reputation for professionalism, to be properly identified to the public as certified intellectual property lawyers."

Minimum requirements for intellectual property law board certification include:
- At least five years of law practice immediately preceding application. Practicing patent application prosecution before the U.S. Patent and Trademark Office qualifies if the lawyer is a registered patent attorney or registered patent agent.
- At least 30 percent of practice in matters related to intellectual property law during the three years immediately preceding application.
- Experience requirements during the five years immediately preceding application for at least one of the following categories: patent application prosecution, patent infringement litigation, trademark law and copyright law.
- Satisfactory peer review assessment of competence in the intellectual property law field as well as character, ethics and professionalism in the practice of law.
- At least 45 hours of continuing legal education within the three years preceding application; and
- Passage of a written examination demonstrating knowledge, skills and proficiency in the field.

Board certification is valid for five years, during which time the attorney must continue to practice law and attend Florida Bar-approved continuing legal education courses. To be recertified, requirements similar to those for initial certification must be met. Not all qualified lawyers are certified, but those who are board certified have taken the extra step to have their competence and experience recognized.

Intellectual property board certification standards are available on The Florida Bar Web site at www.FloridaBar.org/certification . More information on the 22 legal specialty areas also is available by contacting The Florida Bar's Legal Specialization & Education Department at 850/561-5842.

On October 16^th, 2009 South Florida patent attorney, John Rizvi, will be giving a presentation entitled “Patent Pitfalls for the General Practitioner” at the 2009 Broward County Bench-Bar Convention held at the Broward County Convention Center in Ft. Lauderdale, Florida. Although many inventors do approach Florida patent attorneys for legal assistance, others initially go to one of Florida’s many excellent general practitice lawyers for preliminary assistance. Even if these general practitioners ultimately refer the matter to a patent attorney, John believes there is still a need for such non-specialists to be aware of certain statutory deadlines and other pitfalls of practice in the specialized area of patent law.

The Broward County Bench-Bar Association has been working diligently to ensure that this year’s convention surpasses even the great successes of previous years. The convention is designed for all attorneys, regardless of their field of practice. There will be a total of 114 different seminars and breakout sessions covering a wide variety of legal subjects. The theme for 2009 convention is “Practicing Law in the 21st Century.” The Bench-Bar Convention is intended to give judges and lawyers an opportunity to discuss 21st century technology and the problems facing the legal system today. Featured speakers include Bar president Jesse Diner and Bar Foundation president Adele Stone.

 

Two dozen exhibitors will also be displaying their products and services, and will be available in the conference area from 7:30 AM until the convention ends at 6:30 PM.

John Rizvi is a founding partner of Gold and Rizvi, P.A. In addition to practicing patent law in Florida for almost a decade, John spent several years as a patent attorney at the internationally renowned intellectual property law firm of Fish & Neave in New York City. With over 200 intellectual property attorneys, Fish & Neave (now merged with Ropes & Gray) is recognized as one of the top patent firms in the world and was retained by Thomas Edison, Henry Ford, the Wright Brothers, and Alexander Graham Bell when they desired protection for their ideas. John has written a number of articles on intellectual property and regularly cited in patenting journals and legal newspapers on the subject. 

He regularly speaks to authors, inventors, and business groups as a Miami patent attorney and is knowledgeable in implementing international patenting strategy.  

John is AV Rated by the Martindale-Hubbell Law Directory, the highest rating possible, and focuses his practice on the preparation and prosecution of U.S. and international patent and trademark applications, patent and trademark validity and infringement opinions, licensing, transactional support, and all aspects of intellectual property litigation.

    As a Florida Patent Attorney concerned with keeping the innovation pipeline full and flowing, I've often pointed out patenting opportunities when evidenced by the social, cultural, and other macro trends around us. I don't think it will surprise anyone, then, that I'm today urging Florida innovators to consider the strong opportunity for fuel-less alternatives.

    The most obvious, of course, is in the automotive industry, with fuel costs raising prices for all of us--in expected and unexpected places. (This is one Florida patent attorney who thinks twice in the aisles of the grocery store.) Among a slew of news stories centered around this topic, the 13 Central Florida news team, in their online edition, points out rising consumer interest in electric cars or, for a few, converting their current car to electric ones. Electric cars are one option--which comes with its own set of limitations and complications--among a few other alternatives. Innovators within and without the automotive industry are wracking their brains to come up with effective solutions.

    However, as with so many historical inventions, the best solution may very well come from one insightful individual--maybe right here in Florida. Patent attorneys and inventors alike find this an exciting time and opportunity; the prospect of going down in  the annals of patenting history is right before us! Are you him/her?

    The grandest patenting opportunity may be in transportation, but it's certainly not the only opportunity for fuel alternatives. With rising fuel costs impacting businesses and consumers on a broad scale, how many ways may there be to develop innovations to increase production efficiency and trim costs in other areas? In my estimation, countless. Even here in my Florida patent attorney office, I can see  myriad challenges to be addressed in the name of cost and time efficiency. Look around, I think you'll see them, too.

    A great majority of the news on patents deals with patent infringement, patent law, and, not coincidentally, it brings to mind the overriding importance of ethics in protecting intellectual property--and profits. As a Florida patent attorney, the long term growth of my business depends on the integrity of the patent applications I file, and recent news underlines its significance.
    In a recent online edition of the International Herald-Tribune, Robert Pear wrote an article on just this issue. Currently, patent law dictates that patents held by companies or individuals who have engaged in "inequitable conduct" are subject to having those patents revoked. A pretty severe penalty--maybe, and the subject of hot debate in today's courtrooms.

    Patent laws, which affect Florida patent attorneys and patent seekers (and interested parties everywhere), are at the crossroads, with some lobbying for "the biggest changes in U.S. patent law in more than 50 years." Very nearly every industry is represented.

    On the one hand, opponents of current patent law wonder if the law is too severe for what senior VP and general counsel for Eli Lilly calls "relatively minor acts of misconduct." According to the article, the U.S. Court of Appeals for the Federal Circuit has found inequitable conduct in "at least 40 cases, including 14 that involved pharmaceutical or health care products." Types of misconduct have included submitting false statements to the patent office, a lack of accuracy in describing experiments, and concealing information contradicting their claims. Brand name drug companies and the companies who support them report that accusations are frequent and, often simply "honest mistakes."

    On the other hand, I wonder: In patenting, particularly medical patenting, is there really any room for mistakes--honest or otherwise? Florida patent attorneys and patent attorneys everywhere who are registered with the U.S. Patent and Trademark Office know that protecting their clients requires the utmost in meticulous attention to detail (after detail after detail). The better the application, the more quickly it passes, the more secure the received patent is from attack, and the more the client is free to profit from it. With patent infringement and other litigation costing us into the billions of dollars, can we really afford misinformation and mistakes?

    Consumer groups think not, though recent patent legislation threatens to make it a little easier to make "mistakes." The House of Representatives approved a bill making it more difficult to prove inequitable conduct, and the Senate Judiciary Committee are "haggling over a companion bill." That bill may reach the floor this summer.

    The need to stop unfounded accusations notwithstanding, this Florida patent attorney is hopeful that the backbone of integrity that supports the patent system will win out and grow in strength in years to come.

As I've often mentioned, it is the individual inventors throughout our history who have kept the pipeline of ideas and innovation humming with vibrancy. Today, I read an article in (CNNMoney.com, dated November 27, 2007) that tells of an inventor of a cell phone translation technology who is set to generate big revenue with this invention.

Having reached patent pending stage, the inventor has entered into an agreement with FTS Group to own 10% of their new subsidiary "Version Ventures Corporation," while FTS will own the remaining 90%. This means that the company will bear the responsibility for manufacturing and marketing and all other costs, while the inventor stands to generate revenue for the fruits of their labor and his/her own ingenuity. Not a bad way to do business. Congratulations to the inventor, and I look forward to seeing how the technology will benefit cell phone users when the patent becomes official. Visit AgoraCam.com for more information on the venture.

Can getting a single letter of the alphabet wrong in an issued patent spell disaster when it comes to litigating against infringers?  Unless the mistake is seen as being a minor typographical error that can be corrected by filing a certificate of correction, the answer is a resounding yes.

Hats off to Peter Zura of The 271 Patent Blog for his post on Central Admixure Pharmacy Services v. Advanced Cardiac Solutions (06-13-07).

 In this case, Central Admixture Pharmacy Services sued Advanced Cardiac Solutions for patent infringment relating to a chemical solution used duriing heart surgery. 

Hats off to Mark Reichel of The Daily Dose of IP Blog for his post regarding the U.S. Patent Office discontinuing its annual top ten patent holder list.

In the Patent Office press release, the PTO announced that it will no longer be publishing its annual ranking of the top 10 organizations obtaining the most U.S. patents in the preceeding year.  According to the press release, it is abandoning the list of top ten patent holders and "emphasizing quality over qualtity by discouraging any perception that we believe more is better." 

 About time.  I always wondered why the patent office focused so much attention on their "top ten list" as all it really did was provide those few "repeat customers" lucky enough to be in the "top ten" with bragging rights on their level of innovation.  

I wonder if the patent office's departure from this "strictly by the numbers" approach is the beginning of a new trend in the intellectual property field.  Are we finally able to look beyond the total number of patents in any defined segment before making broad generalizations based upon that number.

For example, as long as I can remember, the well known publication, Intellectual Property Today has tabulate its "Top Patent Law Firm" and "Top Trademark Law Firm" listings based EXCLUSIVELY on the number of patents and trademarks these firms obtained for their clients in any given year. 

The law firms near the top of this list invariably (like their corporate counterparts in the PTO's top ten listings) used their ranking in IP Today's top ten lists in their marketing materials. 

Perhaps such marketing efforts are persuasive--I don't know--but I welcome comments from in-house patent counsel as to what weight, if any, the IP Today annual top firm survey has on their choice of private patent or trademark counsel.

(As an aside: I am currently considering corrective laser eye surgery to eliminate my having to wear glasses and have narrowed my choice of surgeons down to a handful in the Fort Lauderdale / Miami Florida area---let me tell you...the number of eyes ZAPPED per year per doctor is not on my list of criteria!)

I am sure that rankings that go "strictly by the numbers" is the easiest and least controversial method of publishing listings of law firms and the PTO's top ten list.  But just because something is the "easiest and least controversial" does not mean that it is faultless.  From the perspective of a Florida patent attorney, I fail to see how a ranking by the numbers provides any indication of quality (as in the listings of patent law firms) or of innovation (as in the PTO's top ten listings).  

I was waiting to return to sunny Florida from a short two day visit to the patent office last week and, instead, I ended up stranded at Washington's Reagan airport for over eight hours. 

According to news reports of the massive snow and ice storm in the Northeast, I was not the only one.  Luckily I had brought a copy of a new book, "Patents for Business" by patent attorney Henry Heines and had time to complete it during the wait.

Although not written for patent attorneys, per se, a couple of the chapters still make for good reading for in-house intellectual property lawyers looking for practical advice on patent due diligence and strategy.  For patent attorneys, I advise skipping the early basic chapters on patent subject matter, novelty, and determining patentability and jumping right to patent portfolio referencing and other more advanced topics focusing on strategy.

Peter Zura does an excellent review of "Patents for Business" on his 271 Patent Blog and if  you are not a patent lawyer, you may want to read his review .  In fact, his blog makes for excellent reading and is a "must read" for anyone seriously interested in patent news and analysis.

Interestingly enough, the domain name PatentsforBusiness.com, does not direct you to a website for the book but instead takes you to a company website that claims to be "dedicated to the development of patent portfolios aimed at meeting the objectives, needs and requirements of your business".

I am not sure if there is any connection between the author and this website but if there is not...this underscores the importance of investigating potential conflicts with domain name registrations prior to any branding strategies whether that branding strategy be a new business name, product identity, or (as in this case) the title for a new book.

When most people think of Samuel Clemens, or Mark Twain as he has penned himself in his writings, they think of the famous author and fondly recall reading his well known works Huckleberry Finn and Tom Sawyer.

Few realize that Mark Twain, born in Florida, Mo., was also an aspiring inventor and the holder of three U.S. patents.  From what little Mark Twain wrote of patents in his fiction, it appears as if Mark Twain believed strongly in the U.S. patent system and its benefits to society.

In his book, A Connecticut Yankee in King Arthur's court, he has the Connecticut Yankee say the following about the patent office:

"...the very first official thing I did in my administration-and it was on the very first day of it too-was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab and couldn't travel anyway but sideways and backwards."

In his Intellectual Property Counsel Blog post entitled " A Litmus Test to Identify Exceptional Patent Attorneys ", in-house Florida intellectual property attorney Todd Mayover provides a good overview of things that distinguish a " good patent attorney "from an "exceptional patent attorney ". 

In particular, he writes:

Adding value to patents requires a complete understanding of an invention, knowledge of the current state of the field of art, the ability to identify how an invention fits in to the industry or market, and the ability to identify and distinguish the closest competitors.

I could not agree more with this statement but feel the need to question sometimes the way that in-house attorneys make their hiring decisions for patent prosecution work.  Many times, outside counsel are chosen on the basis of firm and name partner reputations without any inquiry at all on who will actually be doing the work. 

There is nothing wrong with this, of course, as long as the attorney and partners that were responsible for building a law firms reputation are the same ones that will work on your matter.  If they are not the ones actually doing the work on a company's application, however, in-house intellectual property lawyers should question why they are paying for a senior partner's billing rates when a "wet behind the ears" new associate is actually the one doing the "heavy lifting" on the patent application draft.

The United States Patent & Trademark Office posted the following article on their website which may be of interested to those seeking patent protection:

As part of its ongoing efforts to promote investment in innovation and spur economic growth, the Department of Commerce's U.S. Patent and Trademark Office (USPTO) today announced a new proposal that would streamline and improve the patent application review process. The new proposal would encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.

According to an article in the Ft. Lauderdale Sun-Sentinel, SoLapharm, Inc. a Plantation, Florida based pharmaceutical company, has created a process by which existing drugs are reconfigured into new tablet designs that include an inactive layer where the pills can be split.

A working model or prototype is not necessary before the filing of a patent application with the United States Patent & Trademark Office. Often, however, those seeking to apply for a patent wil produce hand-drawn sketches or drawings of the invetion, in order to help the drafter of the application write a more detailed, descriptive, and accurate rendition of the characteristics of the invention.

In order to persuasively distinguish an invention from the prior art to the United States Patent & Trademark Office, it is helpful to address the following:

A) State the problems, limitaztions, and disadvantages associated with existing technology but overcome by the invention.

B) What new elements (e.g. components, process steps, circuitry) or combinations of known elements or software algorithm produced the improvements over known technology?

Before a patent application is filed with the United States Patent & Trademark Office, it is important to produce a very detailed disclosure of the invention which will aid in the drafting of a patent application that will withstand scrutiny from a patent examiner. The detailed description should include:

FOR A NEW OR IMPROVED PRODUCT

A) Describe the structural elements/components
B) Describe step-by-step how the invention is contructed/assembled
C) Describe any interaction/cooperation of components, e.g. during use
D) Describe the environment in which the invention is intended for use
E) Describe the purpose/function of the invention.

Before a patent is issued by the United States Patent & Trademark Office, a detailed application must be prepared and filed with the USPTO clearly specifying what the invention is and how it can be made and used. A patent application includes an abstract, claims, a declaration, a governmental filing fee, and typically several sheets of drawing figures.

The United States Patent & Trademark Office has guidelines for what it considers to be patentable inventions. A utility patent may be granted for a new product or process as well as functional improvements to existing products or processes.

Where an idea relates to the improved decorative appearance of an item, it may be protected with a design patent.

In a press release from PRNewswire, a Federal Appeals Court affirmed LAMPS PLUS' jury verdict, finding that Patrick S. Dolan of Portland Oregon, and Craftmade International, Inc. of Dallas, Texas, and their joint venture Design Trends LLC had infringed on LAMPS PLUS' patents.

According to a press release from PRNewswire, Intelligenxia, a Jacksonville based company that specializes in advanced analytics solutions for unstructured data, was granted its first patent on January 25, 2006 by the United States patent & Trademark Office. The patent involves groundbreaking technological advances in extraction of crucial information from unstructured sources.

According to an article in ESchool News Online, The U.S Supreme Court refused to hear an appeal by Research in Motion Ltd., a Canadian based company that was challenging a federal appeals court ruling that found it had infringed on the patents held by NTP Inc., a small northern Virgina patent-holding firm, because customers of RIM use the BlackBerry within the United States.

According to an article written by Christopher Hayes and quoted in the Progress Report, a shift in patent laws over the past ten years has resulted in increased "methods and system" patents, which have opened the flood gates on the amounts of patent claims, and given greater control to big business over innovative ideas.

On January 3, 2006, the United States Patent & Trademark Office said it may limit the ability of a company to file continuing applications that allow it to revise or modify its existing patent claims, according to an article at MSNBC.com.

The reasoning behind this new rule concerns the growing backlog of patent applications that are waiting to be reviewed by patent examiner's at the United States Patent & Trademark Office.

According to an article in Anderson Independent-Mail, Ice House America, a Florida-based company, has patented an ice machine that dispenses both 16-pound bags and 20-pound loads of loose ice, at a cheaper cost than those of grocery or convenience stores. These ice-houses are capable of producing more than 500 16-pound bags of ice per day.

Lexington International, LLC, a Florida company based in Boca Raton, prevailed in its patent infringement lawsuit against Phototonic Research and LBI Investments, Inc. According to the article in PR Web, Lexington International, LLC, which manufactures and distributes the HairMax LaserComb internationally, initiated the litigation to send a message to manufacturers of substandard products on the market disguising themselves as the patented HairMax LaserComb, infringing on itellectual property rights and damaging the consumer as well.

In a column in the The Herald in Bradenton, Florida, entitled "Invent Something? Plan Marketing Carefully", business columnist Jerry Osteryoung offers good advice to inventors looking to hire a patent attorney to assist them in securing legal rights to their ideas.

If life were like the popular board game Monopoly ®, obtaining meaningful patent protection would be as simple as buying up Boardwalk and Park Place. In the board game, you simply purchase the property you want, place houses or hotels on them over time, and eagerly collect a continual revenue stream from the successful venture.

The rules governing monopolies on ideas, however, are significantly more complex. As you mull over the unique features of your newly discovered invention or method of doing business, I want to dispel a number of common, yet potentially dangerous, misconceptions about patents:

Misconception No. 1: All of the good ideas have already been patented.

Fact: In 1899, U.S. Commissioner of Patents Charles H. Duell reportedly stated that "everything that can be invented has been invented." His statement, as we all know, was followed by the invention of the airplane, television, radio, cars, computers, biotechnology, space travel, microwave ovens, cellular phones, digital cameras, the artificial heart, and the internet! The line of thinking that all the good ideas are gone is as wrong today as it was back then. Major pioneering inventions, such as the development of the internet, are being made on a daily basis and there appears to be no end in sight.

Misconception No. 2: It is necessary to include a working model of your invention along with an application for a patent.

Fact: This is a very common misconception. Working models, prototypes, or exhibits are very rarely required for most patent applications. Even the Wright Brothers had not flown when they applied for their groundbreaking aeronautical patents. Their famous Kitty Hawk adventure did not occur until March 23, 1903, a full nine months after the filing of their patent.

Although a working model is not generally required, the description of the invention in the specification and the drawings does have to be sufficiently clear and complete to permit the invention to be understood by someone familiar with the field of the technology.

When most people think of patents, they automatically think of a new mechanical product, a chemical composition, or a manufacturing process. Since a landmark Supreme Court decision in 1998, however, an increasing number of patents are being issued for innovations in business methods. Patents are not just reserved for classical scientific innovations anymore, but are regularly used by banks, stockbrokers, insurance companies, and retailers to protect their newly developed methods of doing business.

In the past, the U.S. Patent Office rarely granted business method patents. Additionally, software patents were not considered to be patentable subject matter because of a belief that software was nothing but an unprotectible algorithm. Today, however, patents are routinely applied for and issued for software and business methods as well as Internet-related applications. New software patenting guidelines have been issued by the U.S. Patent and Trademark Office and have made software patents easier to obtain.

Patents, not copyrights, are now the only way to give adequate protection to the most important aspects of software. The is true because the "idea" behind a particular algorithm is much better protected as a patentable method than as a narrowly limited expression in copyright law.

Most software designers are interested in preventing others from stealing the core methodology used in their software. As such, a patent on the software should be obtained. The principal benefit of protecting computer software through the patent system is the strength of protection that is provided by a patent.

E-commerce patents have attracted a lot of attention in the news lately and the U.S. Patent Office is facing criticism, once again, relating to their examination and issuance of patents relating to a revolutionary new technology.

I say "once again" because this is not the first time a new technological development has stirred up controversy at the U.S. Patent Office. Over a century ago, there was severe criticism relating to the granting of agricultural inventions.

This was followed by debates about the patenting of the telephone, the automobile, pharmaceutical drugs and the recent criticism of the biotechnology industry. With this historical backdrop, it is little wonder that the development of the Internet has spawned another patenting debate.

Inventors can obtain three different types of patents in the United States, namely, plant patents, utility patents, and design patents. Plant patents are rare and are used to protect a new plant that the inventor has produced asexually (without using seeds). A utility patent can be used to protect the way a new technology functions and is used. A design patent protects the visual characteristics of an item.

There is often confusion among inexperienced entrepreneurs and inventors regarding the differences between utility and design patent protection. It is important to understand that a design patent protects only the appearance of an article and not its structural or functional features. It is different than a utility patent because it offers no protection for the way an article works and can only protect the unique visual "look" of a new item. As such, if you are looking to protect the way your invention works, a utility patent should be pursued. The proceedings relating to granting of design patents are similar to those relating to utility patents with a few differences.

Inventors can obtain three different types of patents in the United States, namely, plant patents, utility patents, and design patents. Plant patents are rare and are used to protect a new plant that the inventor has produced asexually (without using seeds). A utility patent can be used to protect the way a new technology functions and is used. A design patent protects the visual characteristics of an item.

There is often confusion among inexperienced entrepreneurs and inventors regarding the differences between utility and design patent protection. It is important to understand that a design patent protects only the appearance of an article and not its structural or functional features. It is different than a utility patent because it offers no protection for the way an article works and can only protect the unique visual "look" of a new item. As such, if you are looking to protect the way your invention works, a utility patent should be pursued. The proceedings relating to granting of design patents are similar to those relating to utility patents with a few differences.

In my post entitled "Risks of Disclosing Your Invention Prior to a Patent Filing", I discuss a number of risks associated with the pre-filing disclosure of an invention.

I did not address, however, pre-filing discussions with a patent attorney and would like to discuss that now. This is often an area of concern among inventors.

A Non-Disclosure Agreement (sometimes called a confidentiality agreement) is used by an inventor to reveal an unpatented idea to a party. The inventor has the other party sign a document that says they will not disclose any of the information to anyone else, and will not compete with the inventor.

I strongly discourage revealing your invention until you have filed a patent application even if you have a Non-Disclosure Agreement. Non-Disclosure Agreements should be used sparingly and only when disclosure of your idea to another party is required.

The possibility of having your new idea stolen before you have applied for a patent is something that has haunted every new inventor.

It is important to keep the details of your new idea secret until you have at least applied for a patent. In addition to the possibility of your idea being stolen, there are other potential pitfalls of disclosing your invention before a patent application is applied for.

Maintaining an inventor's notebook or log costs close to nothing and provides immediate evidence documenting the date of an invention before a patent attorney can be retained to file a patent application.

Ideally, an inventor's log should be a bound notebook. There are professional Inventor's Logs commercially available with green grid-lined paper for drawings. You do not need to go out and buy a fancy (i.e.-costly) inventor's notebook. All that is really needed is a notebook with permanently bound pages. You do not want to use a spiral-bound notebook, looseleaf binders, or legal pads.

Let us start by looking at the at the different types of patents that are available - These are utility patents, design patents, and plant patents. Plant patents are very rare. As the name suggests, a plant patent is used to protect newly developed plants. My practice focuses on utility and design patents and these will be discussed below:

Reason No. 1: Because I Teach Patent Law to Other Lawyers and Law Students

For the past nine (9) years, I have been an Adjunct Professor at Nova Southeastern University Law School teaching patent, trademark, and copyright law to graduating law students. 

In addition to being an Adjunct Professor at Nova Law School, I lecture and teach patent and trademark law to other attorneys and members of the South Florida Inventor's Society and other business groups. Some of my past lecturing experience has been:

 “Preservation of Legal Rights in Medical Innovations” before the Florida International Medical Exposition (August 2007).

2000 - Present: Adjunct Professor, Nova University, Shepard Broad Law Center, teaching annual International Practice Clinic on Intellectual Property Law including patent, trademark, and copyright law to third year graduating law students.

"Licensing Your Intellectual Property" before the Inventor's Society of South Florida (June 2002).

“Patent Protection for New Ideas” before the Inventor's Society of South Florida (July 2003)

Florida Bar Approved CLE Seminar for attorneys entitled "Mining Patents for Competitive Intelligence” for the Society of Competitive Intelligence Professionals (SCIP), based in Alexandria, Virginia. (February 2003)

Tradewinds 2004 International Business Conference. Taught Seminar entitled "International Trade Secret Protection in Central America & the Caribbean". (October, 2004)

Florida Bar Approved CLE Seminar for attorneys entitled "Patent Essentials for the Nonspecialist" for the Broward County Bar Association Section on Intellectual Property (April 2005).

I believe my teaching patent law to other attorneys, law students, and business people makes me a better patent lawyer myself. You really do not know a subject unless you are able to teach it to someone else. 

Patent depository libraries are an excellent resource for patent research. The United States Patent & Trademark Office has established around 80 depository libraries throughout the United States with at least one in each state. Many states have several. For example, Florida has two patent depository libraries in South Florida, one in Miami and a second one in Ft. Lauderdale.

There are two major types of patents issued by the United States Patent & Trademark Office, namely, utility patents and dsign patents. A utility patent protects the function of an invention. The term of a utility patent is 20 years from the date of filing.

A design patent protects the overall appearance of an invention and is granted for any newm original, and ornamental design for an article. The term of a design patent is 14 years from the date of issuance.

It is important before filing your patent application to know if anything like it has been patented before. A patent search is a search of all the patented items in the U.S. Patent & Trademark Office archives.

Many inventors have looked for their invention on store shelves, specialty stores, and industry publications. However, not finding your invention on the market does not mean that it has not already been patented. There are many pre-existing patents for products that, for one reason or another, have not made it to the market. It is often helpful to have a search conducted to see if the inventions described in existing patents are similar to yours.

Patents are essential business assets that can enhance profit margins, contribute to monopoly or licensing revenue, and increase market share and name recognition for your company and its product lines. Without adequate legal protection, it is only a matter of time before existing and new competitors enter the market, steal your idea, and drive down prices. Patent rights can be sold outright or licensed to one or more parties in exchange for royalties.

In its simplest form, a patent is a legal monopoly granted by the United States Patent & Trademark Office to an inventor, enabling him or her to commercially exploit the benefits of their creativity. A patent permits an inventor to exclude others from making, using, selling, or importing an invention in the United States without the inventor's permission.

A working model or prototype is not necessary before the filing of a patent application at the U.S. Patent and Trademark office. Often, however, clients will provide me with hand-drawn sketches or drawings of their invention.

There are four statutory classes of patents under U.S. patent law:

• (1) Machine (any device or apparatus);
• (2) Manufacture (a manufactured article);
• (3) Composition (combination of ingredients such as chemicals, and
• (4) Process (method of doing something)

I am frequently asked by inventors to explain how patents differ from trademarks and from copyrights. They are fundamentally different. Lets take a quick look at trademarks and copyrights now.

First, lets look briefly at trademarks. A trademark can be a word, logo, design, or even a combination of these. A service mark is similar to a trademark except that it is used to express the origin of services.

In the famous words of Abraham Lincoln, "the patent system added the fuel of interest to the fire of ingenuity". The founding fathers of our country chose to provide every citizen the incentive to create and invent.

A patent is a right, granted by the United States to an inventor, to exclude others from making, using, selling and even importing an invention into the United States without his or her permission.

A patent holder's rights of preventing others from making, using, and selling an invention is contingent upon the invention being adequately disclosed to the public in the patent application.

Adequate disclosure is the ticket price you pay for patent protection. No ticket-no ride. An invention that is not adequately disclosed is not entitled to patent protection.