Patent & IP Law for Virginia Businesses

(and for Businesses located anywhere in the U.S.)

Welcome to the Patent & IP Law in Virginia Blog! This blog gives Virginia businesses answers to practical questions that often come up for innovative enterprises and startups considering Patent & IP protection. These are answers to questions that this firm fields most often from clients here in Virginia as well as clients outside of Old Dominion. Please read on, and feel free to contact Keefe IP at any time with any questions you may have on Patents & IP as a Virginia innovator (or as a prospective patentee located anywhere in the U.S.)!

(Also, please visit our Published Articles page and Global Patent Filing blog!)

What is “Freedom to Operate” in the Patent Context?  

By Stephen L. Keefe, Esq. January 17, 2025 (3 minute read) 

  Bottom line up front:  “Freedom to Operate” (FTO), also known as patent clearance, involves a complex and often expensive battery of activities designed to reduce the risks associated with infringement of third party patents.  Because the full scope of complexity associated with FTOs can easily amount to a book’s worth of information, this article provides just a brief overview to give the Virginia innovator a general idea of what FTO encompasses. 

  At its core, FTO is rooted in common sense tactics for avoiding patent infringement.  Virginia inventors intuitively know that when any new product or activity is introduced into the commercial marketplace, an inherent risk of infringement of existing third party patents by that product or activity exists.  FTO provides a crucial tool for reducing that risk as much as possible. 

  Not surprisingly, searching for enforceable third party patents that may cover a given product forms a key pillar of any FTO effort.  Such searching to identify third party patents usually includes patent databases and technical sources and should start as early as possible and should be updated as often as necessary during the R&D process.  FTOs often start with “patent landscaping” at the start of the design process, as soon as the form of a product designed to fill a market need begins to take shape.  These efforts can also identify areas of so-called patent white space that may be free from third party patents and therefore be ripe for one’s own patenting and product commercialization.  As FTO efforts proceed, particularly in crowded technologies for existing IP, innovators may identify many relevant third party patents.  These third party patents may potentially block some avenues for product design.  Identifying these possibly problematic patents early in the design process may allow innovators to change tack and alter their designs, entirely avoiding infringement situations in the future.

  FTO is iterative, with risk of infringement of identified third party patents being revised or expanded as product designs morph during the R&D process, in which these FTO tasks should be embedded.  FTO efforts often expand to encompass infringement opinions and/or invalidity opinions of particularly relevant third party patents that may overshadow aspects of a preferred design that is expected to be commercially successful by the developer.  That is, for particularly “close” third party patents, the risk of infringement of those patents and/or possible invalidity of those patents may be scrutinized in a legal opinion by a patent attorney.  Perhaps the risk posed by these particular third party patents may be deemed low enough to be acceptable for continuing with a given product design.  Prior to product launch, FTO activities (e.g., including patent searching and legal opinions) are finalized and the product is possibly green-lighted and put on sale.  Or perhaps the risk is deemed too high and designers may perform a design-around for the product based on what the FTO uncovered.

  FTO efforts tend to differ between projects, tailored specifically to the features of a given product design effort.  The resources put into FTO work should be proportional to the resources devoted to the R&D costs of a given product.  Because FTO expenditures can be quite high, sometimes dwarfing the costs of patenting one’s own inventions, business acumen should be used in making decisions for expending resources on FTO efforts.  For example, innovators may need to judiciously distribute resources in parallel between patenting their own inventions associated with a given product and FTO efforts to clear that product for launch.                         

  Takeaway:  In summary, an FTO effort is a complex undertaking that should assess infringement risks and inform decision-making regarding product design choices and the ultimate launch of a product.  Virginia innovators should undertake FTO activities, when needed, as early as possible in the R&D process and update FTO search and analysis whenever necessary as part of R&D workflow.      

What Exactly Is the “Prior Art” Often Mentioned in Patent Law?  

By Stephen L. Keefe, Esq. December 20, 2024 (3 minute read)  

  Bottom line up front:  “Prior art” references the existing technology over which an invention must be novel and nonobvious to obtain a patent.  By definition under the patent laws, prior art can include printed publications, public use, sales, or other activities available to the public.  Patent Examiners at the U.S. Patent & Trademark Office (USPTO) cite prior art to reject patent applications of Virginia innovators, while patent challengers can use prior art not found by Examiners to invalidate issued patents.     

  Most prior art actually cited by Patent Examiners includes both U.S. and foreign issued patents and patent publications.  Even patent applications that were unpublished at the time of an Applicant’s patent filing can become prior art against that Applicant.  In contrast to a common misconception that only U.S. patent documents can be used against U.S. patent applications, Examiners can use patent literature from all over the world to reject applications filed in the U.S.  In addition to patent literature, prior art can further include publicly available publications such as webpages and technical literature.  In general (as one example source of prior art), if a source can be found in a library, it can be used as prior art.  Importantly, your own public disclosure can be used against your own invention as prior art (see the below blog post of July 20, 2023, for more on this pitfall).

  Prior art can also include various other activities anywhere in the world.  Sales and offers for sale of the invention anywhere in the world generally qualify as prior art.  Public use of the invention anywhere in the world also generally qualifies as prior art, though limited exceptions exist for experimental use of an invention that occurs in public.  It is the public use facet of prior art creation that makes trade shows such a danger to patenting, as the business pressure to rush an innovation to market can often create a trap in which trade show disclosures turn into patent-destroying prior art.  Internet publication of an invention presents similar dangers of prior art creation.  In general, any activity that is available to the public presents a risk of prior art creation that can be used to reject an invention.         

  Many wrinkles exist in patent case law regarding prior art creation, the result of so many litigation battles having been waged over what qualifies as prior art.  In view of the many cases decided on this issue, the one-year mark plays a critical role in the complexity surrounding prior art.  In general, while an invention might survive potential prior art created less than one year before filing of a patent application, an invention hardly if ever survives prior art created more than one year before patent filing.  This is yet another reason for Virginia inventors to keep an invention as secret as possible before patent filing, and to file a complete patent application as soon as possible, as recommended throughout this blog.    

  Takeaway:  In summary, prior art creation occurs in many different ways, encompassing previous patent documents, publicly available documents, and other activities available to the public.  Publication and public activities by third parties as well as an Applicant’s own prior art creation can sink a patent, with prior art created more than one year before patent filing usually being lethal to patent rights.

Does Marketability Make My Innovation Patentable?  

By Stephen L. Keefe, Esq. November 15, 2024 (2 minute read)  

  Bottom line up front:  Although marketability can help the Virginia innovator with patentability, patentability and marketability are distinct from each other.  Though many patentable inventions meet with success in the commercial marketplace, other marketable products stand little to no chance at the patent office.

  As an initial note, selling or offering to sell an invention before filing a complete patent application can destroy patent rights.  Even your own commercial activity involving your invention can be used against you to stop patenting.  See the below blog post of July 20, 2023.

  The U.S. Patent & Trademark Office (USPTO) generally awards patents based on the novelty and nonobviousness of the underlying invention.  The direct legal interplay between patentability and marketability in the United States is rather modest.  The commercial success of a patented invention certainly forms part of the obviousness inquiry Patent Examiners perform when evaluating an invention.  However as a practical matter, trying to rely solely on market success to obtain a patent on an invention that is fairly taught by the prior art typically turns out to be an uphill, longshot affair.  Such a strategy often breaks down over proving a nexus between commercial success and patent claim features underpinning that success.  The easier road to patentability almost always rests on showing that the prior art does not fairly disclose or teach the claimed features of the invention.   

  In contrast to patentability, marketability often flows primarily from factors other than novelty over the prior art.  For example, many marketable products sell well based on good craftsmanship and manufacture, product resilience, advertising efforts, effective salespeople, influencer endorsements, brand goodwill and loyalty, researching and meeting market needs, and sometimes just plain luck.  Although factors like these can earn solid revenue for enterprises, they typically will not, at least on their own, earn the exclusive rights of a patent unless the innovation possesses novel technical features not found in the prior art.     

  Accordingly, not every good product or concept, even those that promise significant market success, can be patented.  Instead, Virginia innovators should consider focusing their patenting decisions on the novelty and nonobviousness of their innovations in view of the prior art that already exists.         

  Takeaway:  In summary, though often overlapping, marketability and patentability usually flow from different fountainheads and factors.  Marketability of a product or process does not automatically translate into patentability. 

What is One of the Best Ways to Reduce Patenting Costs?  

By Stephen L. Keefe, Esq. October 14, 2024 (3 minute read)  

  Bottom line up front:  Preparing and filing a robust, fully developed patent application tends to have the greatest impact in lowering overall patent prosecution costs.  Although spending more resources up front to draft a patent application that fully discloses all novel points of an invention may sound counterintuitive to the Virginia innovator as a technique for saving money, filing such an application usually significantly reduces the overall costs for obtaining a patent.  It also increases the value of the patent.  Further, this practice increases the probability of success for obtaining the patent, as discussed below in the blog post of February 16, 2024.

  Trying to skimp on patent preparation costs is one of the most common mistakes made by inventors and enterprises in protecting their innovations.  This penny-wise but pound-foolish approach has Applicants paying a reduced cost that allows only limited time for professionals to put into a patent application to fully detail the complete breadth of novelty of an invention.  The result is almost invariably a rushed, thin patent specification and drawings that lack sufficient novel details to provide necessary backup positions for the inventor later during patent prosecution, for example in view of unforeseen prior art.  As discussed below, the end effect of filing incomplete patent applications to save money usually manifests itself later as drawn out patent prosecution having significantly increased costs.

  Official patent office files are replete with file histories that tell stories of hastily drafted patent applications lacking sufficient novel detail, which broke down into tortuous patent prosecution sagas because the originally filed patent applications lacked robust disclosures of novelty to effectively overcome prior art and/or written description rejections.  The amount of costs avoided with hasty patent application drafting often lead to increased costs during ensuing dragged out patent prosecution that dwarf the cost “savings” made early in the process, leading to the penny-wise but pound-foolish outcome mentioned above.  Instead of having a significantly higher probability of compact, relatively low-cost patent prosecution based on a robust application that leads to an allowance relatively quickly, Applicants filing hasty, rough patent applications will typically face repeated prior art and written description rejections that are difficult if not impossible to successfully overcome and/or appeal.  Although obtaining a patent is never a guarantee, spending resources to file a well-developed patent application fully covering the invention’s novelty usually amounts to the best way to increase probability for achieving a successful outcome at a favorable cost at the patent office.  This practice also increases the strength of the obtained patent, providing further value to the innovator.             

  Takeaway:  In summary, Virginia innovators should consider committing sufficient resources to prepare and file robust patent applications fully detailing all novel aspects of their inventions.  Such a strategy will typically decrease the overall money spent by Applicants in obtaining patents, while simultaneously increasing their odds of success at the patent office and also increasing patent strength.

Should I File My Patent Application Using a Business as Owner and Applicant?  

By Stephen L. Keefe, Esq. September 13, 2024 (3 minute read)  

  Bottom line up front:  It depends, but generally yes if you have partners or co-inventors.  It is not required to file a patent application under a business, and you can certainly file an application under your name as both inventor and applicant.  The issue is typically not critical if a Virginia innovator is a sole inventor, but can become quite important when the innovator collaborates with others on the invention. 

  If you are a sole inventor without collaborators such as co-inventors, business partners, investors, or similar parties relating to your invention, whether you file as an individual or under a business entity does not typically matter much, at least from a patent law perspective.  There may be tax implications or similar issues outside of patent law that your CPA or other professionals can address.  However, from a patent law perspective, you can typically readily and easily assign your patent application or issued patent between you as an individual and your preferred business entity when you are a sole inventor and sole owner of both the intellectual property and the business.

  The situation changes dramatically when you have co-inventors on that invention, business partners who are involved with the invention, or other third parties that relate to the patent matter.  In this situation, you should consider addressing ownership of the patent application prior to filing.  Although there are many techniques to handle this issue, having all inventors assign their rights to a business entity at filing is often a good way to nail down ownership and avoid problems such as contentious litigation over ownership later.  Intangible property such as patents is typically treated similarly to tangible property in view of business association law.  Assuming your business entity has agreements in place addressing ownership issues, as it should, ownership of your patent application after assignment to a business should be treated similarly to the rest of the property owned by that business.

  The case law abounds with acrimonious litigation involving co-inventors and similar collaborators who did not fully address ownership as discussed above prior to patent filing.  For example, one wrinkle in patent law that often leads to problems in this situation is how joint inventors are joint owners of patent property in the absence of an agreement such as the assignment addressed above that transfers ownership.  So, if a relationship between co-inventors sours, different parties pursuing different courses of action could retain ownership rights in a patent, which can negatively affect or often derail attempts to license, enforce, or otherwise derive value from the patent.  Addressing ownership prior to filing often nips this type of problem in the bud, before it becomes a crisis.                    

  Takeaway:  In summary, ownership issues are typically less critical at filing for Virginia innovators who are sole inventors.  Joint inventors or inventors having business partners and similar relationships involving the invention, though, should consider addressing ownership issues prior to patent application filing.

If a Competitor's Product Looks Similar to my Utility Patent Drawings, Will it Infringe?  

By Stephen L. Keefe, Esq. August 9, 2024 (2 minute read)  

  Bottom line up front:  Not necessarily, at least for utility patents.  This question comes up frequently with Virginia innovators, along with the similar question of whether or not a competitor’s product that is generally similar to a patented invention and/or product will infringe.  The below blog post of March 1, 2023, involves similar misconceptions of patent infringement as this post.  As explained further below, only competitor products that have each and every element (or an equivalent) of at least one claim of an enforceable utility patent will infringe.  Please note that while this is the case for utility patents, design patents are different (see the below blog posts of May 10, 2024, April 12, 2024, and June 28, 2023, for more on design patents and their differences from utility patents).

  The infringing product (or activity) must have each and every element (or an equivalent) of at least one patent claim of an enforceable utility patent, which is often a relatively mechanical analysis.  The purpose of the patent drawings in utility patents is to support the claims, not to clearly define the bounds of infringement.  Although a competitor product that is an exact or close copy of one of your patent drawings will probably infringe at least one of your utility patent claims, it is possible that the claim scope may be different or narrower than a given patent drawing, typically yielding a legal result of noninfringement.  Thankfully for Virginia patentees, the opposite is also true, with infringement also being possible for competitor products that don’t look all that similar to the infringed utility patent drawings.  This is because the patent drawings are only examples to support claim scope, and an infringing product that does not look very similar to the patent drawings could still infringe relatively broad patent claims of a utility patent.  This is why in patent law, as the famous patent judge Giles Rich once remarked, “the name of the game is the claim.”        

  Takeaway:  In summary, products or activities infringe utility patent claims, not patent drawings.  Although design patents are different, infringement for utility patents happens when each and every element of a claim of an in-force utility patent exists in an accused product or method.

Who is Your Target Infringer?

By Stephen L. Keefe, Esq. July 8, 2024 (3 minute read) 

  Bottom line up front:  Identifying your target infringer should form one of the key themes in protecting your invention.  The claims of your patent must answer this question by targeting and catching the type or types of infringers you need to exclude from using your innovations in the competitive marketplace.

  In many cases, the target infringers of most Virginia innovators are direct competitors.  If your enterprise makes a certain type of product, ideal target infringers are other companies that make the same type of product, as these actors are most likely to see your innovations at work in the marketplace, understand the value of the novelty, and be tempted to use the innovations in their own products.  Depending on the type of innovator (e.g., manufacturer versus a non-practicing entity looking to license an invention) or the type of invention (e.g., type of field or industry), the target infringer may vary.  In any case, inventors should try to determine target infringers for their particular circumstances and ensure that the claims of their patents zero in on catching these infringers.  Although this sounds self-evident and simple enough, Applicants often lose focus on this in view of the complexity of the patenting process.  Related to determining target infringers, innovators should avoid end users as target infringers when possible, as this may result in the uncomfortable situation of inventors having to sue their own customers or potential customers to stop infringement.

  In maintaining focus on the target infringer, Virginia innovators should be careful of drifting into the doldrums of divided infringement.  Divided infringement typically occurs when more than one actor such as a company is needed to infringe a patent claim.  For example, if a patent claim covers an innovative electrical or mechanical component and also directly covers additional components related to that innovative component, then a single patent claim could end up involving the actions of multiple manufacturers of those components.  Proving infringement in this case typically becomes much more difficult, and accordingly the value of the patent decreases, because patent claims may become relatively difficult to successfully enforce.  Potential infringers also look for such weaknesses in patents when deciding whether or not to challenge them or even to ignore these patents as not posing a serious threat.

  Claiming the smallest possible piece or form of an innovation can often go a long way in maintaining focus on the target infringer and avoiding potential weaknesses such as divided infringement.  Referring back to the above example of an electrical or mechanical component, claiming only the component itself, or even a smaller part of the component that comprises the crux of the novelty, can help the inventor to zero in on a single infringing entity such as a single rival manufacturer.        

  Takeaway:  In summary, Virginia inventors should identify target infringers and maintain focus on those infringers in preparing their patent applications and claims.  Innovators should also try to claim the smallest part of an innovation where possible, which can help maintain focus on target infringers and avoid the difficult infringement case of divided infringement involving multiple actors.

What is the Difference Between my Patented “Invention” and my Patented Product?

By Stephen L. Keefe, Esq. June 7, 2024 (2 minute read) 

  Bottom line up front:  A patented invention should generally be broader in scope than a patented product, and should ideally cover many potentially commercializable products.  For example, an invention should ideally encompass several different innovative embodiments of a given innovation.

  Even the most prolific Virginia innovators often fall into the trap of equating one preferred product that they intend to sell with the full scope of their invention.  However, such thinking opens the door to easy design-around efforts by sophisticated competitors to neutralize the value of a patent. 

  The patenting process, when effectively undertaken, should expand protection outside of the limits of a preferred or optimized embodiment of a product expected to be commercially successful.  A patent application should cover different conceivable useful and commercially viable versions or embodiments of an innovative effort, even if a patentee does not expect to bring the invention to the marketplace in such form on its own.  Covering such non-preferred embodiments with patent claims, along with preferred product embodiments, can close the door to similar versions that are just different enough to fall outside of the patent claims while still deriving some or most of the innovative value from a given patented invention.  Making the mistake of narrowly claiming only a single or a few preferred product versions makes copying the spirit of an invention easy for resourceful and sophisticated copyists.  These would-be infringers take just enough of the innovator’s work to appropriate at least some value of a patented invention while still escaping legal problems.  Limiting the patented invention to the patented product intended for commercialization lets this happen.

  Sometimes limiting an invention to a single or a few embodiments can make sense, for example when the innovator lacks the resources to pursue a utility patent.  In these cases, the inventor can consider resorting to a design patent, for example as described in the below May 10, 2024, blog post.          

  Takeaway:  In summary, Virginia innovators should generally avoid equating a patented invention with a single or a few products they intend to sell.  Instead, inventors should broadly claim a patented invention to cover many potential embodiments, even including product versions they deem less than optimal.  This practice can avoid design-around efforts by others in the marketplace to get around a patent and appropriate the value of an invention for their own use. 

How Can Design Patents Contribute to Overall Patent Strategy?

By Stephen L. Keefe, Esq. May 10, 2024 (2 minute read) 

  Bottom line up front:  Although design patents do not cover functional aspects of inventions, they contribute to overall patent strategy by protecting ornamental, non-functional features as well as valuable commercial embodiments.  Also for example, a single innovative effort by a Virginia inventor can be covered by both utility patents and design patents to fully protect inventions.

  Utility patents protect useful aspects and functionality of innovations, while design patents protect ornamental, non-functional features (see the below blog posts of June 28, 2023, and April 12, 2024, for more on the distinctions between utility patents and design patents).  These differences allow for design patents to bolster the functional protection afforded by utility patents by protecting additional, non-functional aspects of a given innovation.  By filing for both utility patent protection on functional inventive aspects and design patent protection on ornamental inventive aspects, patent protection of a single inventive concept can be enhanced in some cases.  That is, utility patent filing and design patent filing on the same innovative effort are not mutually exclusive.

  In addition to bolstering utility patent protection, design patents can in certain cases provide a relatively less expensive, albeit often narrower form of patent protection for filers having limited budgets.  Based on being limited to nonfunctional inventive aspects, design patent protection tends to be narrower and in some ways less robust than the functional protection of utility applications.  For example, design patents are generally relatively easy for the sophisticated infringer to design around by making changes to a product’s non-functional, ornamental features.  But because design patents are usually less expensive than utility patents, and often by a relatively significant margin, they can provide a patenting option for those who cannot afford the cost of utility protection.  Accordingly, filers managing limited resources can resort to design patent protection to protect ornamental aspects of valuable commercial embodiments against infringement by clear knockoffs marketed and/or sold by a lazy copyist.     

  Takeaway:  In summary, Virginia innovators should consider design patent protection as a supplement, or even in some cases as a substitute, to utility patent protection.  This is because design patent protection can cover ornamental inventive aspects not encompassed by utility patents, as well as protecting aspects of valuable commercial embodiments.

How Do Utility Patents and Design Patents Differ for Filing, Prosecution, and Maintenance?

By Stephen L. Keefe, Esq. April 12, 2024 (3 minute read) 

  Bottom line up front:  Some key differences between utility patents and design patents involve patent drawings, foreign filing, publication, patent term, and maintenance.  Beyond the fundamental difference of utility patents protecting useful aspects and functionality versus design patents protecting ornamental, non-functional features (see the below blog post of June 28, 2023, for more on this), further additional, important differences separate utility patents from design patents.

    These additional differences begin to emerge when the Virginia innovator files a patent application with the U.S. Patent & Trademark Office (USPTO).  While utility patent applications allow the option to file a provisional application, for example as discussed further in the below blog post of September 1, 2023, the patent system does not provide for provisional filing of design patent applications.  Also, the patent drawings themselves vary significantly between utility and design patent applications.  Although patent drawings are important for fully disclosing how to make and use a utility invention to support claims, in design patent applications the drawings essentially constitute the patent claim itself.  Special rules and requirements that do not apply to utility patent drawings can cause serious objections in design applications that may derail grant of a design patent.  Accordingly, Virginia filers should strongly consider engaging a patent attorney to prepare design patent applications.

  Regarding patent prosecution, utility and design patents are treated fundamentally differently by Examiners, with the USPTO employing a different cohort of Examiners for utility patent applications that is separate from its design patent Examiner corps.  A common pitfall that trips up the unwary between the two application types involves foreign filing, with design patent applications requiring foreign filing within 6 months of filing, as opposed to the 12 months allowed for utility patent applications (see the below blog post of March 15, 2024, for more on foreign filing for utility applications).  As yet another prosecution difference, utility applications typically become public after 18 months from filing, while design applications usually remain secret until grant.

  Maintenance after patent issue holds more contrasts between utility and design patent applications.  While utility patent applications, with some possible adjustment, typically have a term lasting 20 years from nonprovisional filing, the design patent term runs 15 years from grant.  Also, filers receive a break on maintenance fees for design patents.  That is, unlike for a utility patent, a design patent involves no payment of maintenance fees by a patent holder to the USPTO to maintain a design patent in force. 

  These are only some of the important differences between utility and design patent applications.  Because many other differences exist, would-be patentees should seek a qualified patent attorney who handles both utility and design patent applications for assistance, such as at this firm.        

  Takeaway:  In summary, Virginia innovators should pay special attention to patent drawings for design patent applications and differences in foreign filing between utility and design patent inventions.  Some other important distinctions between utility and design patent application that patent holders should watch for include differences in publication, patent term, and maintenance, among other differences. 

What Deadlines Apply to a Filed Utility Patent Application?

By Stephen L. Keefe, Esq. March 15, 2024 (3 minute read) 

  Bottom line up front:  The main deadlines associated with a filed U.S. utility application involve provisional utility patent applications, foreign filing, patent prosecution, and maintenance fees.  Although the U.S. Patent & Trademark Office (USPTO) may impose additional deadlines on Virginia filers involving formalities and other issues with a utility patent application, the first major deadline is often one year after filing.   

  A filer may either file a provisional application or a nonprovisional patent application with the USPTO (see the below blog post of September 1, 2023, for more on the distinctions between these types of filings).  If filing begins with a provisional utility patent application, the filer has one (1) year to file a nonprovisional patent application to take advantage of the priority filing date of the provisional application.  This deadline is non-extendable.  Importantly, a provisional patent application also starts the clock for foreign filing as further described below.

  A filer of either a nonprovisional or a provisional utility patent application has one (1) year to initiate foreign filing for the covered invention of the application.  This deadline is non-extendable.  Once this one year deadline passes for a filed nonprovisional utility application or a provisional utility application that is followed up with a nonprovisional application, foreign filing will never again be available for the invention.  Note that the deadlines for design patents are different (see below).

  Virginia innovators can pursue foreign filing within the one year deadline described above by either filing a Patent Cooperation Treaty (PCT) application or directly filing in all desired foreign nations (see the below blog post of April 21, 2023, for more on foreign filing and the PCT).  Filing a PCT application has an effect akin to buying an option to foreign file for another 18 months after the one year foreign filing deadline expires.  That is, filing a PCT gives the filer 30 months total from the first priority filing (whether provisional or nonprovisional) to make foreign filings on a utility application.  Although some foreign nations allow an extra month or so for foreign filing, many foreign jurisdictions keep to the 30 month deadline.

  The above deadlines are the major ones associated with U.S. utility application filing, but there are more wrinkles that arise in certain situations.  Additionally, patent prosecution starts a whole new set of deadlines involving responding to USPTO Office Actions and other correspondence, which are too involved to cover in a single blog post.  Patent issue initiates further deadlines for paying maintenance fees. 

  Finally, the above deadlines only apply to utility patents.  Foreign filing deadlines as well as other areas of docketing for due dates are very different for design patents. 

  Takeaway:  In summary, Virginia innovators should be aware that filing a U.S. utility patent application typically involves a one year non-extendable deadline for follow-on filing.  Additional, complex deadlines associated with patent prosecution as well as maintenance fees for issued patents and other nuanced issues also apply to utility patents.

How Can I Increase Probability for Success at the Patent Office?

By Stephen L. Keefe, Esq. February 16, 2024 (3 minute read) 

  Bottom line up front:  The single largest factor for increasing the odds for success of getting a patent, outside of the strength of an invention itself, is to file a well-drafted utility patent application.  There is never a guarantee of receiving a patent from the U.S. Patent & Trademark Office (USPTO).  Even the best inventions of Virginia innovators can hit headwinds at the Office.  A well-drafted patent application helps push an invention through these challenges, whether in attaining or enforcing a patent. 

  A robust utility patent application that fully supports the claimed invention and discloses as much novel detail as possible is usually the fountainhead for success at the USPTO and during enforcement.  Good application drafting starts with vetting innovations to provide candid feedback to clients on inventions which, more likely than not, may end up dead on arrival at the patent office.  Funds for patent drafting are held in trust until earned, and unearned fees will be returned to the client upon this firm’s recommendation to not spend resources on patenting a would-be invention, for example because of uncovered prior art or obviousness issues.  Although Keefe IP always encourages getting a second opinion from a different attorney, this firm will not move forward with inventions that seem to have low to nil probability for success at the patent office, and will return all unearned funds to the client. 

  Regarding application drafting, in addition to weaving in a good novelty story as explained further in the firm’s January 19, 2024, blog post below, an application should fully disclose as many features of the invention as possible that could potentially contribute to novelty.  The novel combinations that may ultimately lead to patentability can sometimes be difficult to predict, so including this wealth of novel detail can provide “back-up” positions for attaining allowable subject matter, for example when the Examiner throws a curve ball or the initially expected paths to issue becomes unexpectedly closed.  The application should also foresee potential design-arounds of the invention and provide claims that may shut down these possible future efforts by infringers and copyists.  Providing and supporting patent claims that protect an invention in different ways and that focus on a varied array of differing focuses and claim scopes for the various novel points of an invention can pay big dividends later in deterring infringement and possible enforcement.  Including a wealth of novel detail that supports claims of varying scope can also help the patented invention survive invalidity challenges at the USPTO’s Patent Trial and Appeal Board, which often greet any attempt by the patent owner to assert patent rights against infringers.   

  As the Virginia innovator may imagine, rushed or hastily done application drafting efforts that do not mine the full breadth of novelty of an invention fall short of raising probability for success during prosecution and enforcement as outlined above.  Shortfalls in the patent application’s robust coverage of an invention’s full novelty often translate into insurmountable obstacles during patent prosecution, or else leave gaps in protecting an invention that can be leveraged by infringers looking to design around or invalidate a patent to co-opt an invention’s commercial value.       

  Takeaway:  In summary, Virginia innovators should raise their chances for prevailing at the patent office by preparing and filing a fully developed utility patent application that fully covers an invention’s points of novelty.  Such an application often makes the difference between success and failure in attaining and enforcing patent rights.

How Important Is a “Novelty Story” in Getting a Patent?

By Stephen L. Keefe, Esq. January 19, 2024 (3 minute read) 

  Bottom line up front:  Very important.  Telling a good novelty story can be instrumental in helping an Applicant to prevail at the patent office.  Weaving a compelling novelty story into a well-drafted patent application can carry through patent prosecution as a theme, which can sometimes make the difference between patent grant and patent rejection for the Virginia innovator before the U.S. Patent & Trademark Office (USPTO).

  Patent Examiners can be tough on Applicants, and receiving a patent for even good inventions is never a guarantee.  Accordingly, Applicants should draft patent applications as robustly as possible to fully describe all points of novelty, because in view of unforeseen prior art it’s difficult to know which novel feature or combination of features may come through for the innovator in the clutch to gain a patent allowance.  A good novelty story can tie the need for the invention to its novel features to provide a narrative that may persuade even skeptical Examiners that the invention is nonobvious.

  The novelty story typically starts with the field of the invention, and how the state of the art in a given field created the need for the invention.  For example, the narrative can include a description of how people in a given technical field have been struggling with a deficiency or shortcoming using conventional techniques and products.  Mother necessity then creates the invention by inspiring the inventor to solve that problem in the prior art.

  The patent application then fully discloses all of the novel features that meet the need, often in combination with known methods and elements.  The novelty story can tie the need and the novelty together in a compelling narrative to justify allowing the invention.  That is, the novel features recited in patent claims aren’t merely a random combination of facets surrounding the invention, but rather part of an intentional effort by the inventor to overcome challenges in the inventor’s field to, as the constitutional framers put it, promote the progress of useful arts.  Telling the novelty story can form a valuable part of the Examiner Interview, which the USPTO offers to Applicants and their representatives as an opportunity to explain the novelty of inventions to Examiners.

  The novelty story can also provide a check on the decision to devote resources to patenting to begin with for a given invention.  If an inventor can’t tell a compelling novelty story for a given invention, then there may not actually be a patentable invention at all.                      

  Takeaway:  In summary, Virginia innovators should consider using their patent applications to tell novelty stories for their inventions.  This novelty story can serve as a theme that innovators can use during patent prosecution to help justify why their patent claims aren’t merely random combinations of features, and that their inventions possess novelty worthy of patenting.  

What’s an NDA got to do with it?  (How do NDAs relate to Patents?)

By Stephen L. Keefe, Esq. December 15, 2023 (3 minute read)     

  Bottom line up front:  NDAs offer another layer of protection while patenting, but should be used carefully.  Although NDAs (non-disclosure agreements) aren’t necessary to successfully gain patent protection, their cautious use can provide additional protection for a Virginia patentee’s invention prior to the invention’s publication as a patent application or grant as a patent.

  NDAs technically run counter to patents, in that NDAs generally comprise an agreement to keep information confidential, while patents provide a legal monopoly to the inventor on an invention in exchange for publicly and fully disclosing how to make and use that invention to the public.  A successful patent prosecution effort typically involves publication of the invention to the world.  So how does an NDA, which typically hinders or blocks disclosure of information, fit in to the patent process as a useful tool to the inventor?

  As a threshold issue, an inventor can successfully obtain a patent without using an NDA.  The best practice is to always file a complete nonprovisional patent application fully describing an invention before making any public disclosure of that invention.  Assuming a patent grant follows, the filed application blocks others from making, using, offering to sell, selling, or importing the invention as claimed for about 20 years from the filing date.  Unless some sort of government secret or unusual case is involved, the content of that application will ultimately become public, usually within 18 months or earlier of filing the application.  But as long as the inventor keeps the invention secret prior to filing, a properly drafted patent application itself can issue as a patent, with priority back to the filing date, that can stop others from stealing the invention.  This constitutes the inherent “deal” the Founding Fathers made with their political progeny:  You tell the public how to make your invention to advance the useful arts, and we’ll give you a legal monopoly for a limited time on your discovery.

  An NDA, done cautiously, can help keep the invention secret leading up to patent filing, and can then help keep the invention secret until patent law compels its publication by statute.  If an inventor needs to communicate with another party, such as a factory or investor, prior to patent filing, signing an NDA with that party can negate the communication with that third party as public disclosure and can force that party not to disclose that information.  Virginia innovators can thereby use NDAs to keep their invention secret and to stop others from stealing their innovations prior to patent filing in a wide variety of situations.

  As a first caveat, though, NDAs do not offer bulletproof protection.  The best practice remains to keep an invention secret until filing a complete nonprovisional patent application.  NDAs may not reverse the effect of public dissemination of the invention information the NDA is meant to protect.  Instead, it offers a cause of action to sue the party that violated the NDA.  The cat, however, can remain out of the bag in many situations.  Accordingly, the NDA only offers a deterrent to a third party against disclosing the inventor’s information, not a way to legally undo an information breach.  For example, if a third party signs an NDA with an inventor, and then the third party discloses the information on the internet prior to patent filing, that disclosure in certain situations could destroy the inventor’s patent rights in the U.S. or abroad.  The inventor may only be left with a lawsuit against the third party for breaching the NDA, which may not cover the devastating effects to the inventor of losing rights to the invention.

  As a second caveat, never blindly sign an NDA.  Consider either using your own NDA forms that you know and trust, or else having another party’s NDA carefully reviewed by an attorney prior to signing.  An NDA typically constitutes a binding legal contract, and may hold pitfalls and consequences for any party signing one, including the inventor.  Predatory actors who use NDAs as swords abound in the marketplace.                     

  Takeaway:  In summary, the cautious use of NDAs, though not required, can offer an added layer of protection to inventor information that can bolster patent protection.  However, Virginia innovators should understand the limits and risks associated with NDAs before relying on them too heavily in the patent process.

Can an Inventor’s Own Priority Application be Prior Art Against that Same Inventor’s Continuation-in-Part (“CIP”) Application?

By Stephen L. Keefe, Esq. November 17, 2023 (3 minute read)     

  Bottom line up front:  Yes.  Accordingly, CIPs should only be filed in limited circumstances.  Although the best practice is to always file a complete nonprovisional patent application fully describing an invention before any public disclosure of that invention, Virginia innovators often find themselves in a position where they must add more novel detail to the invention described in a previously filed application.  One way to do this is through a Continuation-in-Part (“CIP”) application.  But CIPs come with risks that inventors should know.

  Although this post goes deeper into the patent weeds than is usual for this blog, recognizing the below rule of thumb is really what ultimately matters regarding this issue.  If you’re a bit unclear on what a CIP is, feel free to refer to the below firm blog post of September 22, 2023, which generally covers CIP filings and their pitfalls.  Basically, the CIP allows the Applicant to add subject matter to a previously filed nonprovisional application, which can provide a tempting option to many filers.  However, CIPs come with so many wrinkles that innovators should consider avoiding them whenever possible.  For example, the most dangerous of the CIP pitfalls arguably involves the circumstances under which the CIP’s own parent application becomes prior art against the CIP.  When the CIP’s parent becomes prior art against the CIP, the CIP can essentially become worthless as a patent application.  Accordingly, CIPs can cause the counterintuitive situation of an innovator’s own parent (priority) application being prior art against a later CIP application filed by that innovator, even though the CIP claims priority to the parent application.

  The rule of thumb for trying to avoid this situation is to consider filing a CIP no later than one year after any and all parent applications to which the CIP claims priority are published.  That is, no parent application that could cause a prior art problem for the CIP should be publicly available for more than one year at the time the CIP is filed.  Once a parent application has been published for more than one year, the probability of the CIP’s parent becoming prior art against the CIP rises dramatically.  Virginia enterprises should recognize, though, that this is a gray area of the law.  Priority is determined on a claim-by-claim basis, so determining the ultimate priority date for different claimed features of an invention can quickly become a complex undertaking.  Different judges and courts view this convoluted issue differently.  But at the end of the day, following the above rule of thumb of only filing a CIP within one year of a CIP parent’s publication (or better yet, before the parent publishes) will significantly increase the odds of the CIP’s success.  However, the CIP has other pitfalls as well, as discussed in the September 22, 2023, blog post below.  For example, CIPs aren’t generally recognized outside of the U.S. 

  Takeaway:  In summary, innovators should try to avoid CIPs whenever possible.  If filing a CIP is absolutely necessary, consider filing the CIP no later than one year after any and all parent applications to which the CIP claims priority are published.

Can I Still File a Patent Application if I’ve Already Publicly Disclosed my Invention?

By Stephen L. Keefe, Esq. October 20, 2023 (3 minute read)   

  Bottom line up front:  Yes, but it’s not the best practice.  The best practice and accordingly the best position to be in as an innovator is to have a complete patent application on file with the U.S. Patent & Trademark Office (USPTO) prior to any public disclosure of an invention.  However, if public disclosure has already occurred prior to filing, U.S. law provides a limited grace period that preserves the possibility for patent filing under certain circumstances following public disclosure of an invention.   

  Because filing a fully developed patent application prior to any public disclosure helps to put the Virginia innovator in an optimal position regarding intellectual property, enterprises should endeavor to make this practice an integral part of business processes.  Business leaders should plan and develop processes and timelines to try to ensure that patent applications on their inventions are filed as soon as possible after those inventions are complete, and before any public disclosure of a given invention is made.

  But it is understandable in view of business challenges that innovators may not always achieve this best practice.  Many types of public disclosures, such as disclosures to potential investors, offers to sell, sales, internet advertising, and trade show disclosures are vital to keeping an enterprise’s bottom line where it needs to be to keep a business successful.  The law provides some carveouts to public disclosure, such as through the use of non-disclosure agreements (NDAs) and regarding experimental use of an invention.  However, these carveouts are limited and may only prevent or negate some public disclosures that may endanger patent rights.

  In general, inventors potentially create prior art against themselves that may sink their patent applications with any public disclosure of their inventions prior to patent filing.  The patent laws provide a limited grace period that can protect inventors against this type of potential prior art.  The grace periods of the past were stronger, providing essentially a one-year ironclad grace period.  The grace period of the new law enacted over a decade ago has arguably introduced some additional risk into the grace period.  Still, in general, an inventor is protected against public disclosure as long as:  1.) it occurs one year or less before the effective filing date of the claimed invention, and 2.) the public disclosure is made by an inventor or a joint inventor or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.  Importantly, any public disclosure of an invention made more than one year before patent filing creates prior art that typically amounts to an absolute bar to patent rights for that invention.

     The single greatest disadvantage of having to rely on this grace period is that it generally only works in the U.S. and a few other jurisdictions.  Most foreign nations have no grace period and deem any public disclosure occurring before patent filing as destroying patent rights.  Accordingly, in general, using the one-year grace period to shield against prior art typically means that foreign patent rights outside of the U.S. have been destroyed.  That is, because many foreign jurisdictions do not recognize the grace period, most foreign patent rights are lost as soon as any public disclosure is made before patent filing.    

  Takeaway: In summary, Virginia innovators should always try to file a complete patent application on an invention prior to making any public disclosure of that invention.  If public disclosure is made before patent filing, the law offers a limited one-year grace period for public disclosure by an inventor of an invention.  Relying on the grace period carries risk and disadvantages, including the loss of most foreign patent rights as soon as public disclosure before patent filing is made. 

Can I Add Anything to my Previously Filed Nonprovisional Patent Application?

By Stephen L. Keefe, Esq. September 22, 2023 (4 minute read)   

  Bottom line up front:  There is a way to do this, but it’s rarely a good idea.  Although Virginia innovators can add additional description and drawings and generally make any desired revisions to their provisional utility patent applications (e.g., see the below post from September 1, 2023), the situation is different for nonprovisional applications.  As further explained below, only minimal changes can generally be made to a previously filed nonprovisional patent application.  Although a different type of patent application (discussed below) may be used to add to an already filed nonprovisional application, it comes with significant limitations and pitfalls.

  A nonprovisional patent application should fully describe an invention so that one of ordinary skill in the art in that technical field can make and use the invention based on reading the application.  In a way, a patent application serves as a stand-in for a working prototype of the invention itself.  Because the nonprovisional patent application is supposed to fully enable use of the invention on the day it’s filed, the U.S. Patent & Trademark Office (USPTO) is understandably extremely leery of any inventor who tries to add “new matter” to an already filed nonprovisional application.  Aside from correcting typographical errors and making amendments to the patent claims that are still supported by the originally filed application, the USPTO allows no “new matter” to be directly added to the drawings and specification of a filed nonprovisional patent application (but again, you can add to a provisional application as explained below in the September 1, 2023 post).  Accordingly, Applicants should ensure that their filed nonprovisional patent applications fully and correctly describe their inventions, because it is generally not possible to directly add to them.

  In the real world, though, this of course causes challenges.  Often the case arises when an inventor discovers new features, improvements, and better commercial embodiments for a previous invention on which a nonprovisional patent application was already filed.  If it’s any consolation, most Applicants at some point or another face the quandary of discovering improvements or revisions to their inventive work that they wish could have been included in a nonprovisional filing, though they tried their best to describe the complete invention in their applications.  So, what should a Virginia inventor do when faced with this dilemma?

  Likely the best solution amounts to trying to wait until those changes and improvements coalesce into a new invention that can stand on its own in terms of novelty and nonobviousness, even against the previously-filed nonprovisional patent application itself.  In fact, many innovative businesses follow this practice, which can avoid the limitations and pitfalls discussed below.

  Another, generally less effective technique is to file a continuation-in-part (CIP) application, which builds off of a previously filed nonprovisional patent application by adding “new matter” to it.  The United States is one of few jurisdictions worldwide offering such an application, and it is fraught with risk.  First, almost no other major nation in the world recognizes the propriety of CIP applications, and therefore foreign filing based on a CIP is severely limited.  Second, a parent application from which the CIP claims priority can itself become invalidating prior art against the CIP in certain situations.  Third, relating applications to each other such as with a CIP can create administrative burdens by requiring that at least some prior art cited in a given case (e.g., the parent) be cited in a related case (e.g., the CIP), with dire consequences should Applicants fail to do so.  Fourth, if the CIP can’t stand on its own based on its own novelty, the commercial value of that incremental invention to the filer may be minimal in many situations. Fifth, because priority is determined on a claim-by-claim basis, any CIP patent claim not fully supported by a parent application will only have priority to the later CIP filing date and not all the way back to the earlier parent application filing date.

  Accordingly, the best practice typically remains to wait until those incremental changes and improvements can stand on their own as a separate invention and then to file a stand-alone, unrelated patent application on that separate invention.  However, if the incremental improvement is vitally important and must be added to the original nonprovisional application, then the next best practice is often to file a CIP as soon as possible after the parent, which may reduce risk associated with the pitfalls discussed above.        

  Takeaway:  In summary, Virginia innovators should try to follow the best practice of filing complete nonprovisional patent applications that each stand on their own in terms of novelty over prior art.  Applicants can consider waiting until incremental advances and improvements coalesce into a full invention before filing a new, stand-alone nonprovisional application.  In the case in which an incremental improvement or revision must be added to a previously filed nonprovisional patent application for business reasons, a Virginia innovator should consider filing a CIP as soon as possible after filing the parent application to which the CIP claims priority.    

Should I File a Nonprovisional or a Provisional Patent Application?

By Stephen L. Keefe, Esq. September 1, 2023 (3 minute read) 

  Bottom line up front:  Whenever possible, favor nonprovisional patent filing over provisional applications.  Because provisional applications typically cost less to file than nonprovisional applications in terms of U.S. Patent & Trademark Office (USPTO) fees and attorney costs, they offer a tempting option to Virginia innovators.  However, their drawbacks generally outweigh their benefits in most situations.  

  First things first:  what’s the difference between provisional and nonprovisional utility patent applications?  Whereas a nonprovisional application is a complete disclosure including patent claims that will be examined by the USPTO as long as it meets basic formalities, the patent office will not examine a provisional application.  Rather, an Applicant must make a follow-on filing within 12 months of filing a provisional application, which usually amounts to a nonprovisional application claiming priority to the provisional.  Both types of applications secure a priority date to the extent of the subject matter disclosed in that application, and therein lies the Achilles heel of most provisional patent application filings.

  A patent application, whether provisional or nonprovisional, generally only gives priority to its filing date for the claimed invention that’s actually enabled by the four corners of its specification and drawings.  Cheap, partially complete, “rough draft” provisional filings understandably don’t support much in terms of legal patent claims.  As a provisional application becomes thinner and rougher in terms of disclosure and thereby cheaper in cost, its effectiveness for actually giving full priority for a claimed invention back to the provisional filing date drops.  In most cases, by the time a provisional is at the point at which it effectively supports a claimed invention, it is a de facto nonprovisional application at least in terms of attorney effort and cost.  As an added disadvantage, a provisional application filing also starts the 12-month clock for foreign filing for any filings based on that provisional, including any follow-on nonprovisional filing.  So why ever file a provisional patent application?

  You can consider filing a provisional application instead of a nonprovisional application when you have no other choice.  The best practice for patent protection of your invention is to file a complete, nonprovisional patent application before any public disclosure of your invention.  But sometimes this just isn’t possible for a business to do.  You can try to use non-disclosure agreements (NDAs) to shield yourself from public disclosure, but they’re not bulletproof and don’t apply to all situations.  For example, maybe there’s a trade show you just can’t miss and you need to talk publicly about your invention that just isn’t quite perfected to keep investors or key parties interested.  Maybe your competitors could separately be working on something similar and you need to beat them to the patent office.  Life and business can make best practices undoable in many different ways.  These are the situations when innovators can resort to a provisional application.

  When you do have to file a provisional, make it as complete and as much like a nonprovisional patent application as possible, which will increase the probability that you can rely on the provisional filing date for priority of the claimed invention versus competitors, prior art, and future would-be patent challengers.  Then consider following up with your nonprovisional filing as soon as possible, which will hopefully only involve some tweaking of the provisional filing.  In short, innovators want to minimize the gap between the provisional filing and the best practice of filing a complete nonprovisional patent application before any public disclosure.        

  Takeaway:  In summary, Virginia innovators should try to file complete nonprovisional patent applications before any public disclosure of their inventions.  Enterprises should consider resorting to provisional applications when business conditions necessitate it, and then make those provisional filings as much like a nonprovisional filing as possible.  After a provisional filing, consider following up with a nonprovisional application as soon as possible once work on the invention is complete.   

Should I Consider Marking my Products with my Patents? 

By Stephen L. Keefe, Esq. August 11, 2023 (3 minute read) 

  Bottom line up front:  Absolutely yes.  You should consider marking all products you have that are covered by any enforceable patents you hold.  As long as a given patent is unexpired and you have kept up with its maintenance fee payments, Virginia innovators should mark any products covered by that patent to give notice to potential infringers.  As explained below, patent marking could literally pay off if you have to enforce the patent covering the patented product against an infringer.

  The patent laws have provided for patent marking for at least a century, with patentee-friendly “virtual marking” provisions having been added to the law about 10 years ago.  Although the statute contains some nuances, current best practices include two major components: marking on the patented product or its packaging and providing information on the patentee’s website.  For example, the patent holder can mark the patented product or its packaging with “patent” or “pat.” followed by a website URL that is typically a webpage on the owner’s company website.  Then, at that webpage, the patent holder can provide patent information regarding the patent(s) and patented product(s) covered by those patent(s).  Although marking can still be done without the webpage component, using the webpage provides tremendous flexibility to the patentee in marking and in most cases should be used. 

  This patent marking webpage can be a page of the Virginia company’s website dedicated to patents and IP.  As the company’s patent portfolio grows and changes, the patent owner can easily update the webpage to keep patenting information accurate.  In terms of company processes, this offers a dramatically easier method for keeping marking up to date as compared with the old method of stamping actual patent numbers onto products.

  But this all begs the question:  Why bother going through the trouble of setting up the webpage and the internal company process for patent marking?  The answer is notice.  Giving notice to wrongdoers is a theme in the American legal system.  Fully marking your patented products and keeping your patent webpage updated will typically provide constructive notice of your patents to all would-be infringers.  Short of this, the patent holder would have to provide actual notice of the infringement, such as by a letter sent to the infringer.

  Which now begs the question:  Why does constructive notice matter?  The answer is legal damages.  The patent holder’s ability to recover damages for the time the infringement occurs can be tied to the time that notice is given to the infringer.  With the constructive notice afforded by patent marking, notice is deemed automatic and usually begins when infringement begins.  This should increase the amount of time that damages can be recovered over the course of infringement, which increases the amount of money that can be won by the patent holder against a patent infringer.  As the amount of money at stake in a case increases, the importance of patent marking increases.                  

  Takeaway:  In summary, Virginia innovators should consider marking any products covered by their patents with information regarding those patents.  The best practice includes marking the product or its packaging with a webpage address and then keeping that corresponding webpage up to date as the patent portfolio grows and changes.  Successfully implementing a patent marking program can increase damages recovered by the patentee during an infringement suit, and sometimes to a large degree.   

Can My Own Actions and Public Disclosures Be Used Against My Patent? 

By Stephen L. Keefe, Esq. July 20, 2023 (3 minute read) 

  Bottom line up front:  Yes.  If you take the wrong actions at the wrong times, you can create prior art that can sink your own patent application.  The key here is timing.  Virginia innovators should ensure that they file their patent applications and take their business actions in the correct order.

  In many situations, your own disclosures to third parties such as potential investors and outside collaborators and businesses, public disclosures on the internet or at trade shows, sales, offers to sell, published articles, and many other types of public disclosures can create prior art that the patent office and patent challengers can use to reject your patent application or invalidate your patent.  You can try to use non-disclosure agreements (NDAs) to shield yourself, but NDAs aren’t bulletproof and present their own risks. 

  Accordingly, the best practice in patenting is to file a complete, nonprovisional patent application that fully describes your reduced-to-practice invention prior to making any public disclosure or taking actions such as those listed above.  But this is of course easier said than done in view of all of the actions that Virginia innovators must take to financially succeed.  The trick is balancing the full development of your invention with taking actions to advance your business so that you can file your patent application at the right time.  A few tips are discussed below that may help.

  Keep your invention to yourself or confidential within your business fully, or at least as much as possible, until you have finished developing the invention and have a complete, nonprovisional patent application on file.  Do not describe your invention on the internet, in journals or trade magazines, at trade shows, offer it for sale or sell it, make contracts involving it, or make any other public disclosure until your complete, nonprovisional patent application is filed.  Filing a provisional patent application, which allows up to 12 months to file a follow-on nonprovisional patent application, tends to only be as effective as the quality of the provisional’s disclosure itself (e.g., for a provisional to be truly effective, it needs to essentially be a nonprovisional application). 

  Although U.S. patent law still offers a limited one year grace period for filing a patent application after publicly disclosing an invention, businesses should not rely on it.  The grace period generally covers only the inventor’s own disclosures and does not cover all public disclosure.  More importantly for international patenting, because many foreign jurisdictions do not recognize this grace period, most foreign patent rights are lost as soon as any public disclosure is made before filing.      

  Overcoming the above challenges often boils down to some basic patenting touchstones.  Avoid all or as much public disclosure of an invention as possible until a complete, nonprovisional patent application is on file with the patent office.  Integrate your patent filings into your business planning so that you can get the timing of your patent filing right in view of all of the business actions you must take.  Related to timing, start working on your patent as soon as you can in view of developing your invention so that as soon as the invention is fully developed you can file that patent, and only after the filing make necessary public disclosures.  If absolutely necessary you can resort to tools such as NDAs and provisional patent applications, but understand that they will rarely offer the same level of protection afforded by having a complete nonprovisional patent application on file for a fully developed invention prior to making any public disclosure.

  Takeaway:  In summary, innovators can inadvertently create their own prior art that the patent office and challengers can use to reject their patent applications and invalidate their patents.  Innovative Virginia enterprises should endeavor to plan ahead to file a full nonprovisional patent application on a complete invention prior to any public disclosure.  Use of tools such as NDAs and provisional patent applications to avoid or negate public disclosure often carry risks and have limited effectiveness, and should be used with caution. 

What Are the Different Types of Patents and the Differences Between Them? 

By Stephen L. Keefe, Esq. June 28, 2023 (2 minute read) 

  Bottom line up front:  Although there are technically 3 types of patents (utility, design, and plant), the vast majority of Virginia patentees will only deal with utility patents and design patents.  In general, utility patents cover functional features while design patents cover non-functional, ornamental features.  Plant patents, which cover inventions for plants such as flowers and trees, only pertain to innovators who are active in fields such as arboriculture and horticulture.  The remainder of this article focuses on utility patents and design patents, which broadly apply to most technical fields.

  When most people think of patents, such as the ones that covered the light bulb and the motion picture camera that Edison invented, they are thinking of utility patents.  Utility patents cover almost all technical fields, ranging from mechanical and electro-mechanical fields to biopharma and chemistry.  Utility patents cover the useful aspects of an invention itself, including what functionally constitutes the invention such as operable components, how the invention is made, how the invention operates, and how to use the invention.  That is, the utility patent covers the essence of the invention itself.

  Design patents are different.  Rather than covering an invention itself, design patents cover ornamental, non-functional features.  For example, a design patent can cover the shape and design of a component, such as the shape of a metal machine part or the configuration of a plastic container.  However, design patents do not in general cover how those components are useful or how they operate.  Not surprisingly, some overlap exists between the ornamental features covered by design patents and the well-known shapes covered by trademark law (e.g., the distinctive shapes of bottles of well-established soda brands).

  As an example, both utility patents and design patents could protect innovations related to a car.  For example, inventions for a car’s powertrain, such as engine components and drivetrain parts, are typically covered by utility patents.  In contrast, a design patent could cover the car's hood ornament.  

  Takeaway:  In summary, innovative Virginia enterprises will typically deal primarily with utility patents and design patents when protecting their intellectual property.  Utility patents cover functional aspects of inventions, while design patents cover ornamental, non-functional features. 

What’s the Total I Should Expect to Pay to Obtain and Maintain a U.S. Patent for 20 Years? 

By Stephen L. Keefe, Esq. June 4, 2023 (3 minute read)

  Bottom line up front:  Although many factors impact cost, the very rough ballpark total cost should be typically between about $8,000 and $12,000 to obtain the patent and between another $2,700 and $5,400 to maintain the patent.  This brings the total, rough ballpark cost for obtaining and maintaining a patent for 20 years to between about $11,000 and $17,400 in 2023 U.S. dollars.  This also assumes the Virginia innovator has remained within the recommended price range for attorney costs for preparation of a high quality patent application described below in this blog’s post of February 20, 2023.  That is, as discussed in this previous blog post, paying too much for patent work only further elevates these costs. 

  Many criteria affect patent costs, including the filer’s organizational size and/or income, whether a prior art search is desired, and how reasonable the assigned Patent Examiner is when it comes to the merits of the invention.  This post will cover the most important factors affecting costs.

  For innovators who are new to patent filing and have income below a certain threshold, the U.S. Patent & Trademark Office (USPTO) typically provides deep discounts on official fees.  If the applicant also draws a reasonable Examiner and the invention fares well against the prior art, it is possible to obtain the patent for about $8,000 or even a little less, while possibly paying on the lower end for annuity fees to maintain the patent (e.g., $2,700).  This is typically the best case scenario and thereby the floor in terms of cost, which amounts to a total cost of about $11,000 for obtaining and maintaining a patent for 20 years.  This would be in 2023 dollars and will increase over time to account for both inflation and the occasional USPTO fee hike.  As mentioned above, paying a reasonable amount for attorney fees is necessary to keep costs in this favorable ballpark (e.g., see this blog’s post of February 20, 2023). 

  The factors touched on above may vary, though, which may increase the total cost from the above best case scenario.  Having a relatively greater organizational size, income, and/or number of previous patent filings can easily result in several thousands more in USPTO fees.  Having a difficult Examiner assigned to the would-be patentee’s case can add more cost by dragging out patent prosecution, including adding costs for appeal.  When the perfect storm of these additional costs hits, the total cost for obtaining and maintaining a patent for 20 years can reach $20,000.  Examiner difficulty and/or unforeseen prior art typically emerge in these situations as the critical factors, the risk of which can be mitigated by having a well-drafted, high quality patent application.  Excessive attorney fees for example from conventional law firms with high overhead will only further exacerbate this situation.  Sometimes even the most promising inventions described in well-drafted patent applications become victims to such high-cost circumstances, with innovators dropping applications to cut further losses and avoid spiraling costs.  These are typically the worst case scenarios, which fortunately do not occur regularly at the patent office in the experience of this firm.  Having a high quality patent application can at least reduce the chances of running into these negative circumstances.  However, the possibility always remains that a patent may ultimately not be issued for a given invention based on the prior art already in existence when an application is filed.

  Takeaway:  In summary, the total, typical ballpark for obtaining and maintaining a patent for 20 years is between about $11,000 and $17,500 in 2023 U.S. dollars, as long as the applicant uses a law firm charging reasonable fees (e.g., see this blog’s post of February 20, 2023).  Having a high quality patent application prepared at a reasonable cost, which this firm is committed to providing, can mitigate factors that contribute to cost increases. 

Should I Pay for a Prior Art Search? 

By Stephen L. Keefe, Esq. May 15, 2023 (3 minute read)

  Bottom line up front:  Maybe, depending on your knowledge of the technical field of the invention, your comfort with searching, and similar criteria.  There is no set correct answer.  Some clients always pay for prior art searches, while others never do and leave the searching to the Patent Office and/or do the searching themselves.  Five exemplary criteria that Virginia innovators can consider in making this decision follow below in question form.  If you answer more than half of the below questions affirmatively, you may want to consider paying for the search.  If you answer “yes” to all or almost all of the questions, you should strongly consider paying for the search.

  Before going through the exemplary criteria, potential patent applicants should note that the U.S. Patent & Trademark Office (USPTO) generally does not require a prior art search to be performed prior to filing a patent application.  Although it seldom if ever hurts to do a prior art search, the search can cost additional time and money.  If a search is requested, Keefe IP uses services of professional patent searchers.  It usually takes about 7 business days to receive search results after requesting the search, which applicants may expedite by paying a surcharge. 

  Question 1:  Is paying an additional $650-$750 for a search that seldom if ever hurts, but sometimes doesn’t significantly help, worth the expense to you?  As noted further below, the prior art search may not uncover the closest prior art.

  Question 2:  Would you feel more comfortable paying for a prior art search before expending resources to pay for a patent application to be prepared, even though the search may provide only a false sense of security?  Although professional patent searchers do their best, they are saddled with two major disadvantages relative to the Patent Examiner who will ultimately review the patent application.  First, the Patent Examiner searches the specific technical field of the invention day in and day out, and therefore knows about and will likely find better prior art than the professional searcher who often works in different technical fields every day.  Second, some prior art that will ultimately be found and used by the Patent Examiner may not be publicly available and therefore not found when the prior art search is conducted.    

  Question 3:  Are you unfamiliar with developments in the invention field (e.g., you don’t work in that field and/or you’re not an expert in that field)?  If you answer yes, you may struggle with finding the best prior art on your own.  In contrast, if you know a technical field quite well and assuming you are fairly good with internet searching, you may find prior art that is as good as or better than what a professional searcher may find, based on your knowledge of both your invention and its technical field.  This is probably the most important of the criteria, along with related Question 4 below.

  Question 4:  Are you unwilling or lack the time to do your own internet searching, or struggle with internet searching?  Similar to above, if you answer yes, you may struggle in attempting to do your own searching.  However, if you answer no, you may do as well or better using the USPTO’s Patent Public Search tool, Google Patents, and other similar resources as compared to searchers, particularly if you are experienced in the technical field.  

  Question 5:  Will you still be satisfied with having paid for a prior art search if the Patent Examiner finds something your searcher did not?  Understand that Patent Examiners often find and surprise applicants with the closest prior art after examination begins, even when applicants previously paid for a professional prior art search.               

  Takeaway:  In summary, consider your familiarity with the technical field of invention and your proficiency and desire to search on your own in deciding whether to commit additional time and money to prior art searching.  Virginia innovators can consider how many of the above questions they answered affirmatively in making this decision, with an increasing number of “yes” answers supporting the decision to pay for a prior art search. 

Should I Patent Outside of the U.S.? 

By Stephen L. Keefe, Esq. April 21, 2023 (3 minute read)

  Bottom line up front:  If business goals justify the costs, probably yes.  Firm clients consistently struggle with this important business decision because applicants only have one chance to pursue foreign patent protection.  The decision ultimately comes down to an often difficult cost-benefit business analysis.

  In general for each invention on which they file a first patent application, Virginia innovators have 1 (one) year from their earliest priority date to file internationally.  Once that deadline passes, foreign filing generally becomes unavailable, which makes this decision quite final and therefore sometimes quite difficult.

  First the benefits, which are significant.  Obtaining patent prosecution in other developed countries provides similar exclusive rights to make, use, sell, offer to sell, and import an invention in a given foreign nation as the patent rights granted by an American patent in the U.S.  For example, a Chinese patent offers similar blanket coverage in China as the U.S. patent provides in the United States.  Though countless nuances and complexities permeate throughout the international patent system, a patentee can effectively cover a lion’s share of the world marketplace for a given industry while strongly deterring infringers by adding a few strategically placed foreign patents in addition to U.S. patent protection for a given invention.       

  Next the costs, which are high.  Virginia innovators should expect the total costs of obtaining and maintaining each foreign patent to amount to much of the total cost of obtaining and maintaining the innovator’s original U.S. patent.  Obtaining just a few foreign patents can easily triple overall patent costs, complete with seemingly constant invoices arriving from foreign patent counsel during international patent prosecution.  Foreign filing also carries risks similar to U.S. filing, in that many foreign applications fail to issue as patents based on being deemed obvious over the prior art by the patent office or for other shortcomings.  Applicants should not underestimate the significant costs of foreign filing.

  This brings the decision back to the cost-benefit business analysis.  If innovators expect the benefits of filing in select foreign countries to ultimately generate enough value to justify the significant costs of international patenting (e.g., several tens of thousands of U.S. dollars), then foreign filing may make sense.  Although many applicants elect to proceed with foreign filing, many others find the high costs unjustified by their business goals and remain focused on only U.S. patent protection.  The right answer ultimately depends on the innovator’s business circumstances.              

  The foreign filing decision has created so much difficulty for so many innovators that over 150 nations including every major country in the world have signed onto an international treaty, the Patent Cooperation Treaty (PCT), to provide a middle road for would-be international patentees contemplating foreign filing.  By paying several thousand dollars in government fees and attorney work, applicants may file a PCT application that essentially gives the filer another 18 months to decide whether to file internationally and in doing so to defer paying foreign patent costs.  It offers something akin to buying an option to wait another 18 months to decide whether to file internationally for innovators who need more time to get this important decision right.      

  Takeaway:  In summary, deciding whether to file internationally typically involves weighing significant benefits of foreign patent protection against high costs and risks associated with obtaining and maintaining those foreign patents.  Using the PCT may help innovators who need some additional time to make this often difficult decision.    

Is Software Patentable? 

By Stephen L. Keefe, Esq. March 31, 2023 (2 minute read)

  Bottom line up front:  Yes…but expect an uphill battle.  Software inventions, particularly relatively abstract innovations, typically face heavier headwinds at the patent office than mechanical and electro-mechanical inventions.  Although under the patent laws software is unequivocally patent eligible, applicants in this technical field usually face more hurdles in turning a filed application into an issued patent as compared to less abstract fields such as mechanical and electro-mechanical disciplines.

  The problem facing software inventors boils down to the often inherently abstract nature of their inventions.  The more abstract an invention looks to the patent office, the more grief applicants receive as a practical matter in the form of patent claim rejections.  Pure software inventions involving largely data transfer and viewing data on a device such as a smartphone tend to have relatively low allowance rates from the patent office and higher invalidation rates when enforced, as compared to other technology areas.  Software inventions may fare better when they involve tangible features such as controlling drones or other real world applications, but even then could still experience more difficulty than primarily mechanical or electro-mechanical innovations.

  To illustrate the difficulties with software inventions, this firm has recently seen some software inventions being prosecuted deemed novel and nonobvious over the prior art, but nevertheless rejected as patent ineligible as too abstract for patenting.  That is, the patent office may still block patenting of a software invention as abstract even after acknowledging the invention itself is inventive over conventional technology.  Such a situation rarely occurs in patenting mechanical or electro-mechanical innovations, and when it does, it tends to have more to do with problems in application drafting or a weakness in the invention itself.        

  The pendulum of case law swings back and forth, and some day obtaining software patents may become easier again (like it was 20 years ago).  However, even in that possible future case, it will probably remain safe to say that software applicants will still face more of an uphill battle with their filings in general than mechanical and electro-mechanical applications. 

  Takeaway:  In summary, software patents tend to be harder to both obtain and to successfully enforce in general, as compared to mechanical and electro-mechanical inventions.  This situation results from the inherently abstract nature of many software inventions relative to most mechanical and electro-mechanical innovations.  

Are There Ways to Speed up Getting a Patent?

By Stephen L. Keefe, Esq. March 8, 2023 (3 minute read)

  Bottom line up front:  Yes. Some straightforward ways to speed up patent prosecution include either paying extra fees or meeting an age requirement.  Although the U.S. Patent & Trademark Office (USPTO) provides many additional ways to accelerate prosecution of patent applications, making special based on inventor age or using Track One prioritization by paying extra fees may arguably comprise the most straightforward techniques for accelerating patent examination.

  In this firm’s experience, the cheapest and fastest way to accelerate examination of a patent application is based on inventor age.  The applicant need only show that at least one inventor is at least 65 years of age, typically by an inventor declaration, and the USPTO will advance the application out of turn to begin examination early.  This sometimes shaves off as much as a year of wait time in the USPTO queue.  The applicant in this situation incurs no additional patent office fees for this method of acceleration.  The USPTO will also similarly prioritize an application based on an inventor’s health.       

  The next easiest option is filing the patent application as a Track One prioritized application.  Beyond some reasonable restrictions on the application substance that typically have little or no effect on many applicants, an applicant need only include an extra form in the filing and pay the additional Track One fees.  These additional fees usually increase total USPTO fees by about one or two thousand dollars depending on the filer’s organizational size or income.  Paying the fee, though, constitutes the only onerous requirement of the Track One program for most applicants.  Like advancing based on age discussed above, Track One usually buys the applicant about a one-year reduction in total wait time at the USPTO.

  Assuming an invention is patentable, using either program can possibly lead to a patent grant within one year of filing in best-case scenarios.  At the least, these programs can usually reduce overall patent application pendency by about a year.         

  The USPTO has other programs for acceleration that often involve a greater showing by applicants.  These programs  include accelerating examination based on environmental benefits, treating certain diseases, countering terrorism, or furthering other societal goals.  Although effective in accelerating examination, these programs in general have more burdensome criteria for applicants to negotiate relative to accelerating using Track One or based on age.    

  Takeaway:  In summary, making an application special based on an inventor’s age or paying additional fees under Track One are straightforward techniques for speeding up patent prosecution.  Both methods offer a relatively simple and reliable way to reduce wait time at the patent office. 

Can Patents Infringe Patents?

By Stephen L. Keefe, Esq. March 1, 2023 (2 minute read)

  Bottom line up front:  Patents do not “infringe” other patents.  Products (or other physical items or activities) infringe patents.  This point comes up often and can confuse the best of Virginia’s innovators.  Be vigilant about your products and activities infringing your competitors’ patents and also for your competitors’ products and activities infringing your own patents, but don’t lose sleep over your patents “infringing” other patents.

  More specifically, products and activities infringe patent claims.  Although many nuances exist for proving infringement, the basic rule is that the infringing product or activity must have each and every element of at least one claim of an enforceable patent.  For example, an accused product needs every element of an apparatus patent claim to infringe, and an accused activity such as a process needs every element of a method patent claim to infringe.  It basically boils down to a relatively mechanical analysis of proving the infringer makes, uses, sells, offers to sell, or imports each and every element of a patented claim in the U.S. to infringe a U.S. patent.  There are many, many wrinkles to enforcing a patent, but at the end of the day infringement often boils down to that basic rule. 

  Although patents do not “infringe” each other, they can still run afoul of each other.  Previous patents and patent applications can serve as patent-blocking “prior art” to newer patent applications.  The first patent application filed with the patent office on a given invention can beat a later-filed patent application covering the same or similar invention.  Inventors can try to prove that other patent applicants misappropriated their inventions.  But these aspects of the patent system still do not have patents “infringing” other patents. 

  Takeaway:  In summary, products or activities infringe patents, but patents do not “infringe” each other.  At its core, infringement happens when each and every element of a claim of an in-force patent exists in an accused product or process.     

How Much Should Virginia Businesses Pay for Preparation and Filing of a High Quality Utility Patent Application?

By Stephen L. Keefe, Esq. February 20, 2023 (4 minute read)

    Bottom line up front:  Virginia businesses should consider paying between about USD $5,000 and $8,000 for attorney work plus U.S. Patent & Trademark Office (USPTO) filing fees (typically about $700 or less for small or medium-sized businesses) and drawing fees (typically about $60-$70 per high quality drawing sheet) for a nonprovisional utility patent application of typical length and complexity. (These numbers are in 2023 USD.)  As explained further below, paying more than this typically subsidizes conventional law firm costs such as overhead or partner profits...or both.  Also as explained below, paying less than this often leads to failure before the patent office or a low-quality and low-value end product.  

  Here’s why you shouldn’t pay more than about $8,000 for attorney work for a high-quality nonprovisional utility patent application of typical length and complexity:  The additional money seldom, if ever, increases the time and effort spent on the application, and therefore rarely increases the value of the application.  For example, conventionally-organized law firms expect junior attorneys to churn out as many filings as possible to reach high billable hour goals every year.  Only a fraction of the amount billed to clients actually goes to compensate the attorney who does the work on a given patent application, along with a small amount of oversight provided by senior attorneys.  Many law firms typically charge up to USD $12,000 or more for attorney time spent on patent applications, with additional USPTO and drawing fees piled on top.  Accordingly, most of the client’s money goes to the conventionally-organized firm’s overhead and partner profits, and does not translate to additional attorney effort spent on a client’s patent application.  Conventional law firms typically expect associates to complete matters within unrealistically short time frames, with associates forced to donate additional personal time to create quality work ... or to simply push through mediocre work to get their time billed and to move on to the next billable task to meet their year-end goals.  This unsustainable cycle explains the high turnover and wide dissatisfaction among associates at conventional law firms.  As most associates burn out and a few buckle down to attain an often non-equity partnership offer, new cohorts of fresh associates graduate from law school to fill the gaps in the ranks.  This is the reality of the conventionally-organized law firm model and why it typically charges significantly more than the about $8,000 actually needed to create a high quality patent application.

  Here’s why you shouldn’t reasonably expect to pay less than about $5,000 for experienced attorney work for a high-quality nonprovisional utility patent application of typical length and complexity:  it doesn’t really exist.  This amount of money will not provide enough time for an experienced attorney to fully prepare and file a high-quality application.  An attorney consistently charging less than about $5,000 per patent application may either have to reduce the amount of time spent on work product or accept significantly below-market compensation for his or her efforts.  Either way, such pricing tends to be unsustainable and incompatible with providing clients with high-quality work.  If an attorney fails to put enough time and effort into a patent application, low-quality work product inevitably results.

Also, unrealistically low pricing is often an earmark of a relatively less experienced attorney who, though meaning well, may simply lack the breadth of experience it takes to fully address the many complexities of patent preparation in view of the case law and client goals. In contrast to less experienced professionals, Keefe IP prepares patent applications using expertise based on over 15 years of combined experience working as a Patent Examiner with the USPTO, practicing patent law at law firms, and as in-house corporate patent counsel. Experience matters, and it allows the firm to deliver high quality work product.     

  High quality patent application drafting at between about $5,000 and $8,000 for experienced attorney time is possible when the law firm providing the application is efficiently organized and allows an experienced attorney sufficient time to completely prepare the application.  The law firm should include a streamlined organization drawing on the new innovations taking hold in the current, dynamically changing economy to keep overhead low.  Such modern, efficient organization allows the innovative law firm to pass on deep savings to clients while allowing the experienced attorney to spend significant time on client matters to provide high quality work product.  Keefe IP is such a law firm.      

  Takeaway: In summary, innovative Virginia businesses and startups should consider utilizing an efficiently organized law firm structured to provide high quality work at below-market cost.  If you are a business or startup leader, consider paying between $5,000 and $8,000 for experienced attorney work plus USPTO filing fees and drawing fees to prepare and file a high quality nonprovisional utility patent application. Feel free to contact the firm if you have any questions!