Patent Attorney – "Pat. Pend."

Category: Patent Information

  • Patent Attorney Answers From Denver’s Mark Trenner…

    Will a patent attorney steal my idea?

    Denver Patent Attorney
    Denver Patent Attorney Mark Trenner

    Many inventors are very protective of their ideas – as well they should be. There are a lot of unscrupulous people and even some unscrupulous businesses. While I can’t speak for other patent attorneys, I can speak for myself.
    I make a living helping inventors protect their invention. I take my duties as a registered patent attorney very seriously. And this includes the duty of confidentiality. I would never violate an attorney-client confidence. And I would certainly never steal an inventor’s idea.
    That being said, however, it is important to remember that you should never discuss your invention in detail with an attorney  until you have formed an attorney-client relationship with that attorney. An attorney-client relationship is typically established by signing a Fee Agreement with the attorney. You should never email details of your invention to a patent attorney before both you and the attorney have signed the Fee Agreement. That way, there can be no misunderstanding that attorney-client confidentiality will apply.

  • Can I change my patent application after it is filed?

    Clients often ask me if they can change their patent application after it has been filed with the Patent Office? Yes, but there are certain restrictions to be aware of.

    The most common mechanism for changing a patent application is by amendment. However, there may be times when it is necessary, or desirable, to file a divisional application, a continuation application, or a continuation-in-part application. What is the difference between a divisional patent application, a continuation patent application, and a continuation-in-part patent application? There are subtle, but important differences.

    A divisional patent application is typically filed when the Examiner issues a restriction requirement (saying that you have tried to claim more than one invention), and makes you withdraw the claims. You can file a divisional patent application including the withdrawn claims. A continuation patent application is typically filed when you want to file another application with claims which were described and enabled by the specification (and/or drawings), but not claimed.

    Because no new matter is added in either the divisional or the continuation, these patent applications will have the same filing date as the parent application, provided the parent application (or a child application) is still pending. Therefore, it is important to discuss the possibility of filing divisional or continuation applications before your patent application issues or goes abandoned.

    A continuation-in-part (CIP) may be filed to add new material to the specification, drawings, and/or claims. CIP applications are typically considered when the inventor makes a change or addition to his or her invention. Anything which was previously described in the parent application specification and drawings, receives the filing date of the parent application. But any new material receives the filing date of the CIP application. Therefore, the bar dates apply to any new material. That is, if the new material was publicly disclosed or publicly used, sold/offered for sale, or published, the CIP application must be filed within one year of such an event or the new material is considered to be in the public domain. Just as with the divisional and continuation patent applications, a CIP application also must be filed before issuance or abandonment of the parent application (or a child in the chain of applications if there is more than one patent application).

    Changes with the new patent legislation which was enacted in 2011 may also affect your filing strategy. Therefore, it is important to discuss any changes or new aspects of your invention with your patent attorney as soon as possible to avoid losing important legal rights to your invention.

  • The software patent debate

    I often receive comments from people who tell me “software shouldn’t be patentable.” To clarify, under Section 101 of the US Patent Laws, software per se (by itself) is not patentable. But software can be claimed in a patent application in such a way that it does comply with the US Patent Laws. That is, the claims of a patent application can be written such that the software is logic instructions which are stored on a computer readable medium (e.g., a hard disk drive) and executable by a processor to transform a machine (e.g., a computing device) to carry out transformative operations. See the US Patent Office Guidelines for computer-related inventions.

    Perhaps this is a technicality, and I’ve had people tell me that this is still “patenting software.” Now we get into a philosophical discussion. For example, I’ve had someone tell me recently that “software is essentially a book written in a different language, and thus software should have stayed within the realm of copyright protection.” While I disagree – that is a book cannot be used to produce any useful result by itself – again, this is merely a philosophical discussion.

    The reality is that software can be patented (if new over the prior art as defined by the patent laws, and if properly claimed). The reality is that if you are a small business or startup, or even an individual inventor that has new software, you should discuss your invention with a patent attorney and seriously consider filing a patent application for your software. We can argue all day about whether software should be patented. But the reality is that the smart companies are patenting their software everyday. Don’t believe me? Take 5 minutes and do a quick search at the US Patent Office patent search site to see some of the patents granted to major players in the software industry, like Microsoft and Apple.