Stuart M. Goldstein, Esq.
Ricci Tyrrell Johnson & Grey
Patenting your own product can produce a number of questions, a fact Stuart M. Goldstein, Esq., an attorney with Ricci Tyrell Johnson & Grey in Marlton, is all too unaware of. With more than 35 years experience in litigation, Goldstein worked for six years as a patent examiner in the U.S. Patent and Trademark Office (USPTO) outside Washington, D.C. Here he discusses some of the areas people should know about when considering the patent process.
1. The America Invents Act was passed in 2011. How does it help entrepreneurs and those looking to develop their own products?
The Act changes how the priority of invention is established in the United States, that is from first to invent to first to file. This eliminates the difficulties of proving who conceived the invention first. As a result, an inventor can simply file a patent application and immediately obtain priority rights to the invention disclosed in the application without the complicated process and inordinate expense of establishing priority, which was the previous requirement of the United States Patent & Trademark office (USPTO). The Act also, in many cases, reduces the patent application fees which the USPTO requires when filing the application and during the ongoing application process.
2. Why is it important to have a patent?
A U.S. patent grants inventors with a valuable property right to exclude others from making, using, offering for sale, and selling their invention in this country. Equipped with this valuable right, an inventor can prevent competitors from exploiting the invention. The inventor has the sole right to make, use and sell the invention for a period of 20 years from the date the application is first filed.
3. How are patents different from trademarks or copyrights?
A patent is a property right granted by the United States which “excludes” others from making, using, offering for sale, or selling an original product, product improvement, design, machine, chemical composition, or process for a period of time, usually 20 years for a utility (functional) patent and 14 years for a design (ornamental) patent. Trademarks and servicemarks distinguish products and services from the competition. They protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicates the source of goods and services. Trademarks, unlike patents, can be renewed forever, as long as they are being used in commerce. Copyrights are expressions of ideas and, as a result protect works of authorship such as writings, music and works of art that have been tangibly expressed. The Library of Congress registers copyrights that last for the life of the author plus a given number of years.
4. What consideration should people make when they are looking to patent a product?
To obtain a patent, the invention must be new, i.e. never been done before, it must be useful and capable of being made (no perpetual motion or time machines will be accepted), and it cannot be an obvious modification of an existing product or technology.
5. Is the patenting process a long one? Would you recommend people consult an attorney to help during the process?
An applicant for a patent can expect the routine patent application process to take between 18 months and 3 years. This is due to the large backlog of applications currently pending before the USPTO. The patent application itself is one of the more comprehensive applications which the government requires. It is always recommended that a patent attorney be engaged to prepare the patent application and guide it through the USPTO system.
6. What do you do after you receive a patent?
As stated above, a patent provides the inventor with the exclusive right to make, use, and sell the invention in the United States. Inventors usually follow two paths. They either produce, market, and sell the invention on their own, which is the more arduous process However, selling the product directly results in the largest rewards, since the inventor does not share profits with any other entity. The second path is to license the patent to a manufacturer who would normally pay royalties to the inventor for all rights to the patent.
7. Do people often run into disputes during the patent process?
Once an application is filed, the patent process requires a patent examiner to conduct a detailed examination of the application, which includes a search of prior patents and the issuance of an examiner’s report, called an Office Action, based on the examination. There is a period of give and take with the examiner, including one or more responses to the examiner’s Office Action, normally required during the process in order to ultimately receive approval of the application. Once again, patent attorneys are adept at dealing with the examiners and the details of the patent process.
8. Does New Jersey seem to be a hotbed for patenting?
My patent practice is centered in New Jersey and I continually handle patents for individual inventors, entrepreneurs, and companies here. The amount of work I do does not vary based on the seasons or the economic climate. This confirms to me that New Jersey is a “hotbed” for invention and filing of patent applications.
9. How many patents do you deal with in a year? Is it something you work on daily or only occasionally?
Patent application prosecution is a large part of my practice and, as a result, I work on patent applications and patent related issues daily. I personally file or work on anywhere between 50 and 75 patent applications per year.
10. What is the most unique product you’ve helped to get a patent for during your years as an attorney?
All patents are “unique” since they must meet the USPTO criteria that they be new. While many of those that I have worked on are quite interesting and useful, I note one in particular since it involves an invention most people are familiar with. I prepared and obtained a patent, US Patent No. 5,488,750, for Quickie Manufacturing Company, one of the largest manufacturers of sponges, mops and cleaning tools in the country. The patent discloses a significant improvement on the commonly used butterfly sponge mop found in most households today. The patent is directed to a sponge mop scrubber attachment, now a component on just about all butterfly sponge mops being sold. Another patent which has great relevance today, U.S. Pat. No. 7,937,880, is a camera firearm system. The system includes a photographic or video camera integrated into a gun. The camera records events contemporaneously with discharge of the firearm, providing a firsthand photo or video of the scene of the discharge. Additional examples of patents which I have prepared and obtained can be found on my website, NJ-PA-PatentAttorney.com.
Published (and copyrighted) in South Jersey Biz, Volume 4, Issue 9 (September, 2014).
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