Intellectual Property – Part II – Templates!

by Thomas Frasher on July 7, 2009

Intellectual Property – Templates
As I promised in my last post, last week: this week is about templates for the creation of intellectual property.
A quick reminder is in order: I said in the first article in this series: you need help, and you need the best help you can get. Seek out and establish a relationship with the best patent counsel that you can find (more on that in Part 4 of the series).

At the time of this writing, there are nearly 130 official forms pertaining to the filing of patents only with the patent office. This article only describes the preliminary process, you will need legal counsel to help with the filing.

While templates are not a panacea for the creative process, they can help organize your thinking and help ensure that there are fewer gaps that can create problems.
The patent filing templates I’ve included here are comprehensive and by no means complete; they are intended to get you started and are no substitute for appropriate legal counsel. That out of the way, let’s get started:

First I will start with templates to assist in clarification of the thinking around the idea, then on to the initial protection, followed by the permanent protection, identification, power of attorney and assignment documents.

Patent Filing Documents:
-Initial Description – or “Do I really need to file a patent”?
This is a critical look at the product or service that you are thinking of patenting. It is coupled to the patent disclosure form below and if you think carefully and ground all of your thinking in facts only, you will know at the end if you should proceed.

Provisional Patent Filing – Quick very broad protection for a limited time.

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date– Sample

The benefit to a provisional filing is that it starts the clock running on patentability.
For example: XYZ Company files a provisional patent on January 1st 2009, and ABC company files provisional patent for an essentially similar invention on June 1st 2009; patentability is in favor of the first provisional filing. It gets protection started earlier, even though you may not have all the information you need to file a non-provisional patent.

If you have all the information you need, skip the provisional and file a non-provisional patent.

Provision Filing Fees, like all filing fees are subject to change, current fees are listed here

Patent Filing – More detailed and more thorough protection

There are very handy guides on the USPTO (United States Patent and Trademark Office) website for patent filings of various types. The links to the guides are here:
For Utility Patents
For Design Patents

Declarations – Who is filing this patent?

The patent declarations are required as part of the patent filing process to determine the inventors’ names, addresses and country of citizenship. Something to remember here: anything you put here will be a public record for at least 25 years. That said, you might want to think about putting only your city instead of your street address when filling in the declarations document.

Sample document

Power of Attorney – helping someone help you

When you find an attorney that you like and that you assess is appropriate for you to work with you will need to file a Power of Attorney document, so that they may represent you to the patent office, each attorney will have their own document, they will differ in format and may have slightly different content, however for the most part that will contain the same information.

Sample Document

Assignments – Who actually can exploit the intellectual property described by the patent?

Assignments are important in the world we live and work in today. Patent assignments create enterprise value in that they become the property of the business entity that owns them. Assignments are made at the point of filing the patent and the assignment is part of the patent filing with the patent office. Each patent lawyer will have their own, and as with declarations and power of attorney documents they will all contain similar information.

Sample document

In some cases the attorney will combine documents into a single document, this makes keep track of all the information easier for all concerned.

Have fun, there is much to learn and it changes all the time.

Once again: You need help, get it!!

Next Week:  Brainstorming New Ideas

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