Bishal Nepal talking to Sajha.com on patent matters
BOSTON, USA: It is a matter of national interest to promote efforts of Nepali Citizens and non-resident Nepalese ("NRN") in science and technology. Because of geography, current economy and politics of Nepal, Nepalese scientists and engineers are not getting full credits or rewards for their creative ideas (inventions). This article is an attempt to educate Nepalese artists, scientists, engineers, businessmen, corporations, lawmakers, and general public on how to appear in the bigger picture of the world by utilizing the power of US patents and PCT (Patent Co-operation Treaty) patent applications, for Nepalese inventions and innovations in science, technology, and art.
Recently, China and India have achieved breakthroughs in technologies and innovations. These breakthroughs in technologies and innovations have escalated their GDP and growth. Nepalese can learn from India and China, and promote their creative ideas throughout the world. Patent is a key legal document to control on export and on import of intellectual property, product, manufacture, design, plant variety, and product-by-process.
This article is written by Bishal Nepal. Mr. Nepal is living in USA since 1999, and he is a graduate from Northeastern University, Boston, with a Master of Science in Electrical Engineering, and from the University of Massachusetts Lowell with a Bachelor of Science in Electrical Engineering. As of this publication (March 2009), Mr. Nepal is preparing for US Patent Bar Exam at United States Patent and Trademark Office ("USPTO"), in order to become a United States Patent Practitioner (Patent Agent).
Q: What is a patent?
A: A patent is a legal document with a monopoly right granted by a Government or a State to an inventor for a limited period time in exchange for a public disclosure of an invention. Patent right excludes others from making, using, selling or importing the invention into a State or a Jurisdiction. This right is a negative right, meaning, a patent does not grant the inventor the right to make, use, or sell the invention; but does grant the right to exclude others from making, using, or selling the invention. The Government body that granted the patent right will not act as a police force when complained or requested by an inventor to stop an infringer, who without any right or license, is making, using, selling or importing ("infringing") an invention, from infringement. It is the inventor who has to act in order to stop the infringement, either by talking directly to the infringer and settling with a license granted to infringer in exchange for a royalty income, or taking the matter to the Court [suing the infringer] for patent infringement, the process called patent litigation.
Q: What is an invention?
A: An invention is a creation of a new machine, process, manufacture, or composition of matter. Some inventions may be based on improvements of pre-existing product or process, while other inventions are radical breakthroughs which may extend current boundaries of human knowledge or experience to an entirely new level. An invention that is new, useful, and not obvious to somebody with ordinary skill in the art or technology, may be able to obtain the legal protection of a patent through a State or Government.
Many people think that the inventing process is very complex, but it is not always true. Inventing is fun and exciting, and everyone can be an inventor. An inventor is a person who thinks about new ways to solve problems in a home, business, community, or even the world. These new ways of solving problems are called inventions. An invention may be a new product, a new design, a new plant variety, or a new way of doing business. Inventions come about in many ways; inventions may happen when someone works to solve a problem; sometimes inventions may be the results of accidents.
Q: Who grants patents in the United States of America?
A: A Government body called United States Patent and Trademark Office ("USPTO") that in under US Department of Commerce, controls the grant of US patents.
Q: How many types of patents are there?
A: There are 3 different types of patents—utility patents, plant patents, and design patents. In USA, utility and patent patents are valid for 20 years from filing date, and design patent is valid for 14 years from grant date.
Utility patent is granted to a product, process, manufacture [a device or a system], or composition of matter, that performs a function, or solves a problem.
Plant patent is granted to asexually reproduced [non-naturally occurring] plant variety, that is invented by human ingenuity.
Design patent is granted to an ornamental design of an invention, where ornamental design is new, useful, and unobvious to a person of ordinary skill in the art.
Q: What is contained in a patent document?
A: According to the Supreme Court, a patent application for an invention is “one of the most difficult legal instruments to draw with accuracy.” (Topliff v. Topliff (1892))
Patent application contains a written description of the invention, claims, and drawings. The written description should allow a person of ordinary skill in the art to make and use the invention without undue experimentation. Claims define metes and bounds of the invention. Drawings may be necessary to understand the invention, unless invention is a process where no drawing is necessary for the understanding.
Q: Is a software process or a business method a patentable invention in USA?
A: In 1980, in the case Diamond vs Chakrabarty, US Supreme Court said, "[A]nything under Sun made by man [is patentable]." Software processes and business methods were questionable for patenting until the year 2000. In the Court case, State Street vs Signature Financial, the Court conformed the patentability of business method, saying if a method or a process produces useful, concrete and tangible result, the method or the process may be patentable. Unpatentable subject matters include a mere manipulation of data structures, abstract ideas, mathematical algorithms, laws of nature, for example electricity, gravity, and magnetism, etc.
Q: What is the cost of filing/getting a US patent?
A: The cost of getting a US patent depends on complexity of an invention. Usually patents may costs $4000-5000 for a simple invention, for example, for a paper clip or a stapler machine; and over $25,000 easily for a complex invention, for example, a complex biotechnology or a complex telecommunication invention. There are two types of fees: fees that are charged by USPTO, and fees that are charged by a patent agent or a patent attorney for preparation of a patent application. A patent agent usually charges $200 to $300 an hour, whereas a patent attorney may charge $300 to $500 an hour for service. Patent agents and patent attorneys have same rights and privileges for patent prosecution matters at USPTO, unless cases involve patent litigation where only patent attorneys can represent their clients in the Court.
This cost for obtaining a patent may be borne by a prospective licensee or assignee (manufacturer or interested party).
Q: What is the value of a patent?
A: It is impossible to predict the value of a patent. A patent document might not produce anything to an inventor, or it may produce millions of dollars. Inventor can sell patent rights for a lump-sum money, or license it to a prospective manufacturer in return for a royalty income.
Q: How an invention can be protected worldwide?
A: Under Patent Co-operation Treaty ("PCT"�), an inventor of a contracting State or Country may file a PCT application at International Bureau of World Intellectual Property Organization ("WIPO"), or a receiving office ("RO"�) at US/RO, EPO/RO, or KIPO/RO. WIPO is located in Geneva, Switzerland. After the application is processed from International Searching Authority ("ISA"�) and International Preliminary Examination Authority ("IPEA"�), the invention will be recommended on whether the invention is novel, has inventive steps, and has industrial applicability. Within 30 months of priority date, the PCT application may enter national stage of any contracting State or Country. The individual contracting State has its own way of granting a patent based on the national stage PCT application.
Q: Can you give us some inside about a career in patent?
A: Patent profession is a dynamic career that requires a blend of engineering/science, law, and business. Different countries have different criteria to enter into patent practice. In USA, a person with engineering or hard science degree, may take USPTO's Patent Bar Exam, and may start patent prosecution practice. An engineer or a scientist may work in a law firm as a technology specialist/scientific advisor in patent matters, and later take Patent Bar Exam to be a patent agent. In USA, especially, in order to be a patent attorney, a Juris Doctor ("JD"--a US Doctorate degree in law) is required. In some other countries, for example, like in Europe, a law degree is not required to be a European patent attorney.
At top US law firms, many patent agents or technology specialists have PhDs, ScDs, MDs, and other advance degrees. PhD is required in areas such as biotechnology. Patent agents and patent attorneys have same rights and privileges for patent prosecution matters at USPTO, unless cases involve patent litigation where only patent attorneys can represent their clients in the Court.
In my opinion, patent profession is a highly influential career that impacts private inventors and corporations in terms of technology, business, and law. A patent practitioner has to live a life at the cutting edges of technologies--technologies that are recent evolutions of mankind. As of 2009, average starting salary of a technology specialist in USA is about $60,000-$120,000 per year; $90,000-$120,000 per year for a patent agent; and $160,000+ ($20,000-$30,000 bonus additional) per year for a patent attorney. Patent attorneys with several years of experience make over $300,000 per year (national average); and top partners make over $500,000 per year.
WATCH THE VIDEO, "Promoting Innovation," that features history and tour of the US Patent and Trademark Office, including information on how the process of patent prosecution is conducted, and how USA remained intellectual powerhouse of the world.http://www.uspto.gov/video/index.htm
