Patent Basics

Stuart J. West, P.E.West & Associates

A Professional Corporation

2815 Mitchell Drive, Suite 209Walnut Creek, CA 94598

Tel: 925.465.4603Fax: 925.944.9598

Topics Presented

How Long Does It Take To Get A Patent?

How Much Does It Cost To Get A Patent?

What Does A Patent Get Me? When Should I File For A Patent? Can I Protect My Idea Without A

Patent? Do I Need A Patent Lawyer?

How Long To Get A Patent

The first answer is, as you might expect, it depends.

However, in general most patents are issued within about 30 to 36 months from the date of filing.

BUT, patents related to software are currently taking about 4 years.

BUT, patents related to food and/or mechanical items are currently taking about 18 – 24 months.

Costs Once again, this can vary depending on

the complexity of the invention However, typical simple inventions have

the following approximate average costs Preparing and Filing Application: $3,800 Corresponding with Patent Office: $1,800 Patent Issuance Fees: $1,000 Maintenance Fees: $500, $1000, $2000

Due at 3 ½, 7 ½ & 11 ½ Years after patent is issued. These are required to keep your patent in force.

Costs to Prepare, File and Correspond With The Patent Office Can Vary Widely Depending On the Level of Complexity of Your Invention.

What Do I Get? A Patent IS the right to stop others from

making, using, selling or importing your invention.

A Patent is NOT the right to make or use your invention.

Example: Let’s say Alexander Graham Bell invented the

telephone and got a patent on it and you invented a telephone with a flashing light (for hard of hearing people) and got a patent on it. In order to make and sell your telephone with a flashing light, you would need to get a license from Mr. Bell for the basic telephone. Mr. Bell could make and sell his telephone (without the flashing light) without your permission. However, he could not make a telephone with a flashing light without your permission.

When Should I File?

The simple answer is, BEFORE you make any public disclosures about your invention.

However, if you ONLY want a US patent and are willing to FOREVER GIVE UP all foreign rights, you can file your patent application up to 1 year after you first publicly disclose your idea or after you first sell your idea. This does not mean that you should wait until

one year passes before you contact a patent attorney. You should contact a patent attorney as soon as you know you want to file a patent application.

Alternatives to Patents!

Trade Secrets If you can keep your idea a secret and still profit from it, you

could benefit from keeping it as a trade secret. However, once anyone figures your idea out, they can use it and you have no protection.

Copyrights If your idea has some artistic expression (sculpture, design,

book, software source code, etc.), you may be able to protect it via copyright. Copyright protections last longer than patent protection, but are generally considered weaker than patent rights.

Invention Registrations An invention registration simply allows you to make your

invention public and it puts you on record as the inventor. Invention registrations really do not offer any protection.

Trademarks If you have a name or symbol that is associated with your

creation that you would like to prevent others from using, you may be able to protect the name or symbol by obtaining a trademark registration.

Do I Need a Patent Lawyer?

If you plan on filing a patent application, then the answer is YES! The process of obtaining a patent can best be

described as a daunting and challenging task for a person not trained in the patent law and the procedures of the Patent and Trademark Office.

The consequences of making a mistake in obtaining a patent are serious and likely permanent.

Do you know the legal difference between comprising and consisting or the legal difference between wherein and whereby? If you don’t know the answers to these questions then you are playing with fire by drafting or prosecuting a patent application without the help of an experienced patent attorney.

Copyright BasicsBy: Stuart J. West, P.E.

Attorney at LawWest & AssociatesA Professional Corporation

2815 Mitchell Drive, Suite 209Walnut Creek, CA 94598

Tel: (925) 465-4603Fax: (925) 944-9598

Topics Presented How Long Does It Take To Get A Copyright

Registration? How Much Does It Cost To Get A Copyright

Registration? What Does A Copyright Registration Get

Me? When Should I File For A Copyright

Registration? Can I Protect My Creation Without A

Copyright Registration? Do I Need A Lawyer?

How Long To Get A Copyright There are two options available through

the Copyright office Expedited Service (with added fees)--$730

Filing Fee Copyright should register within 2 - 3 weeks (max.)

Regular Service (normal fees)--$45 Filing Fee Copyright should register within about 6 months.

However, under an international treaty (The Paris Convention), you have some copyright rights even before you file your application for registration. These rights attach to your work of art at the time they are “fixed in a tangible means of expression.” That means, when you write it down, record it, or actually make it.

What Do I Get?

Right to Sue In order to have the right to sue, the plaintiff

must either have a copyright registration or have been refused registration.

Enhanced Damages If you have registered your copyright, you can

obtain statutory damages for infringement Without registration, you are limited to actual

and demonstrated lost revenue. Possible Governmental Assistance

Copyright infringement is a criminal offense.

When Should I File?

It Depends If you feel that the work will be highly

desirable to pirates or its value may be severely compromised by any unauthorized publication

the file within 3 Months of publication. If you are uncertain about the

desirability of your work, then you can adopt a wait and see strategy

You can file any time after publication and make use of the expedited procedure if necessary.

Protection Without Copyright Filing

If the work is software, it may be protectable under patent law. However, these patents have

questionable validity overseas. The wait-and-see strategy is adopted

by a lot of clients. Filing the application within 3 months

of first publication does not impact rights in any way.

Do I Need a Lawyer?

Yes and No. If your copyright filing is simple and the

work is one clearly identified as a copyrightable work, then you can probably handle the filing yourself.

If your copyright is filing is complex or the work is not clearly copyrightable subject matter (part of a functional item or in a gray area) then you should at least consult an attorney and may wish to have them make the filing.

Trademark BasicsBy: Stuart J. West, P.E.

Attorney at LawWest & AssociatesA Professional Corporation

2815 Mitchell Drive, Suite 209Walnut Creek, CA 94598

Tel: (925) 465-4603Fax: (925) 944-9598

Topics Presented

What Kinds of Trademarks Are There? How Long Does It Take To Get A

Trademark? How Much Does It Cost To Get A

Trademark? What Does A Trademark Get Me? When Should I File For A Trademark? Can I Protect My Name Without A

Trademark? Do I Need A Patent Lawyer? What Can West & Associates Do For Me?

Types of Trademarks

Federal ® Trumps all other marks

State-TM Only valid within state

Common Law-TM Only valid to the geographic extent that

the mark is used.

How Long To Get A Trademark The first answer is, as you might expect, it

depends. Federal Marks

Barring any problems, about 15 - 18 Months 7 Months for examination 3 Months to get to Publication 1 Month in Publication 4 Months after Publication to Issue

State Marks Barring any problems, about 7 days – 1 month.

Common Law You have rights the minute you mark ™ your

mark as an intended Trademark.

Costs

Federal Filing Fees $275 using a predefined goods

description Generally not advised.

$325 using a free-form goods description

Statement of Use Fee--$100 Renewal Fees--$400

State Filing Fees Depends upon State: CA - $70

Common Law Whatever is costs to add ™

What Do I Get? A trademark is a word, phrase, symbol or

design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one party from those of others.

A Federal Trademark gives you the rights to stop others from using your mark or a confusingly similar mark in association with the same or similar goods/services.

A State Trademark provides the same rights as a Federal mark, except only within the state.

Common Law mark rights depend upon the State laws.

When Should I File? As a practical matter, shortly after

you finalize your mark. However, you can file at any time.

There is no harm that will come to your mark by waiting, except someone could beat you to the punch.

Our Firm usually recommends that you file your Federal application once you have finalized the mark and before a first public use.

Worst case scenario, we recommend filing the same day as a first public use or very shortly thereafter.

Do I Need a Lawyer?

While the filing process for a Federal Trademark is relatively easy, we generally recommend that you at least consult an attorney and, depending on changes, have them file it. Common problems with marks selected by

clients: The mark is TOO DESCRIPTIVE The description of Goods/Services is too narrow The mark has been filed in color The same or a similar mark exists at the State Level An office action is received and the person doesn’t

know how to address it and the allows the mark to go abandoned.

Alternatives?

Trade Secrets If you can keep your idea a secret and still profit from it, you could

benefit from keeping it as a trade secret. However, once anyone figures your idea out, they can use it and you have no protection.

Copyrights If your idea has some artistic expression (sculpture, design, book,

software source code, etc.), you may be able to protect it via copyright. Copyright protections last longer than patent protection, but are generally considered weaker than patent rights.

Invention Registrations An invention registration simply allows you to make your invention

public and it puts you on record as the inventor. Invention registrations really do not offer any protection.

Trademarks If you have a name or symbol that is associated with your creation that

you would like to prevent others from using, you may be able to protect the name or symbol by obtaining a trademark registration.

Patents A relatively strong form of protection, but difficult to obtain, can take a

long time obtain and it is usually far more costly than other forms of protection.

What Can West & Associates Do For You?

West & Associates specializes in the preparation and prosecution of patent applications before the United States Patent and Trademark Office and various other international Patent Offices. Our team of experts will competently guide your patent application through the procedural and legal minefields of the United States and/or foreign National Patent Offices.

West & Associates can also prepare and file Trademark and/or Copyright applications, as appropriate.

Finally, West & Associates can assist you in negotiating and drafting license agreements to exploit your idea.

Contact Us

Stuart J. WestWest & AssociatesA Professional Corporation

2815 Mitchell Drive, Suite 209Walnut Creek, CA 94598

Tel: 925.465.4603Fax: 925.944.9598

e-mail: swest@westpatentlaw.comwww.westpatentlaw.com