Common Misconceptions

In the course of 22 years' practice in the patent profession, as both a patent examiner and patent attorney, I (as well as most other attorneys), repeatedly encounter laypersons with major misconceptions about patents, trademarks, and copyright. The following are the most common ones I have found, together with a brief correction of each to set the record straight.

Risk of Loosing your Invention
Getting A Patent
Rights that Patents give
Promoting Your Invention

Short Descriptions of Common Misconceptions

Risk of Loosing your Invention

Patent Applications Open: CM: There is a danger in filing a patent application in the PTO since others can come in, see, copy, or steal your invention.
Fact: By law, the PTO must preserve patent applications in secrecy and in practice is very strict in this regard. Outsiders have no access to any pending patent applications.
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Buy-up By Companies: CM: Often large companies buy valuable inventions, such as the 100,000-mile tire and the 100-mpg carburetor, at a pittance by defrauding the inventor or so that they can continue to make enormous profits from their inefficient or obsolescent products.
Fact: I have never heard of any successful instance of this and there are valid reasons why it would not occur...
Full Description Index

Getting A Patent

Everything Invented: CM: It is more difficult to get a patent now because most of the good ideas have already been invented.
Fact: The Commissioner of patents in 1898 was reported to have made this same statement. After that came television, airplanes, cars, computers, biotechnology, space travel, radio, etc....
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Not In Use: CM: If you have made an invention which neither you, nor any expert or executive in its field, has ever heard of, you can be fairly sure that it is patentable.
Fact: It has been the experience of most patent professionals that "experts" in any field are usually aware of only a small fraction of the "prior art" in that field and that prior patents usually contain many times more references than popular knowledge in the field.
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Patent Best: CM: A patent is the best way to monopolize an invention:
Fact: Trade secret may sometimes be a better way of monopolizing your invention.
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Known Invention: CM: If an invention has been publicly known, but has never been patented, it's "up for grabs" so that anyone who discovers it can now patent it.
Fact: According to the law, a patent can be awarded only to the first person(s) to actually invent a new invention....
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Copy Foreign Invention: CM: One can copy a foreign invention and patent it in the US.
Fact: One must be the actual inventor to apply for a patent. Also, once something is patented aborad, it it too late to patent it in the US.
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Patentability If No Inf: CM: If manufacture of your invention will not infringe any prior patent, you can get a patent on the invention.
Fact: Again a confusing of anticipation and infringement--infringement considerations are irrelevant in determining patentability.
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Foreign Patents: CM: Foreign patents and publications cannot block your patent application, even if they show your invention.
Fact: Prior publication, from anywhere in the world, is valid prior art against your patent application.
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Expired Patent: CM: If your invention is shown in a prior patent, you can still get a patent on the invention, provided the prior patent has expired...
Fact: There are vast differences between anticipation and infringement...
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Rejection On Invalidatable Patent: CM: The PTO can't reject your claims on a patent which itself was improperly issued since it is unpatentable over an earlier patent.
Fact: Even if a prior patent is invalid, it is still a good prior-art reference.
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Patent Pending: CM: The term "patent applied for" indicates that a patent application on an invention has been officially filed in the U.S. Patent and Trademark Office and the term "patent pending" indicates that the patent application has been examined and approved for patent, but has not yet been granted.
Fact: Both terms have identical meanings, legally and to everyone connected with patents and inventions.
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Renew Patent: CM: A patent lasts for 17 years, but can be renewed once.
Fact: US patents are not and have never been renewable...
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Notarization: CM: One can protect an invention by getting a description of it notarized.
Fact: Notarization is of little value since notaries merely witness your signature. you are far better off getting witnesses who understand your invention.
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Rights that Patents give

Patent Pending: CM: Once your patent application is on file in the Patent and Trademark Office, your "patent pending" can be used to sue or stop infringers.
Fact: A pending patent application confers no legal rights on the patent applicant...
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Inviolability Of Patent: CM: Once you get a patent on your invention, you can use it to stop all infringers and it can't be taken away from you or defeated.
Fact: Patents and their claims can and often are declared invalid or unenforceable by the PTO or the courts for various reasons...
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Patent = Freedom From Infringement: CM: If the Patent Office grants one a patent, it guarantees that the invention is free from infringement.
Fact: Patenting an item gives one offensive rights only and does not provide any protection from infringing earlier patents.
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Patent As Defense: CM: If you receive a patent on your invention, it will protect you from infringement suits and other legal problems, allowing you to manufacture the invention with impunity for the life of your patent.
Fact: A patent confers no rights on the inventor (or the patent owner), other than the right to exclude others from making, using, or selling the patented invention....
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PTO Action Against Infringers: CM: If someone infringes your patent, you can file a report with the PTO and they will take action for you against the infringer.
Fact: The PTO is totally unconcerned with infringements...
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Patent Application Infringe: CM: If your invention is covered by the claims of a prior patent, you will be liable as an infringer if you file a patent application on the invention.
Fact: Neither a patent application nor its claims can infringe a patent...
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Avoid Infringement: CM: To avoid infringing a patent, one need merely change what is shown in its drawings slightly.
Fact: The scope of a patent is determined by the wording of its claims, not the drawing.
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Copy Non-Patented: CM: If you copy a device or circuit, you can be validly sued for infringement, even if the copied device is not patented, so long as your copy is substantially identical.
Fact: You are free to copy any device or circuit, even to the minutest details, so long as you do not infringe any applicable patent, trademark, or copyright.
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Paper Infringement: CM: If you draw, reproduce, and sell paper copies of a manufactured circuit, you can be validly sued by the circuit manufacturer.
Fact: While you may feel that you may be bilking the circuit manufacturer, under the law, your action is merely a permissible form of "reverse engineering" and is perfectly permissible since it violates no copyright, patent, or other laws.
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Home Use: CM: What you do in your own home or for your own personal use will not infringe a patent which is otherwise applicable.
Fact: While "home infringement" may be difficult to detect, nevertheless it is a form of infringement which is legally actionable and can subject the infringer to paying damages and/or an injunction prohibiting further infringement.
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Single Element Of Claim: CM: If you get a claim allowed which includes a recitation of an element or feature of your invention, and this claim is valid, you will always be able to enforce this claim against anyone who sells anything with this element or feature.
Fact: A claim must be read in its entirety; if it recites only a single feature of your invention, then it will monopolize this feature and can be used against infringers, no matter how they sell anything with this feature. However most claims recite...
Full Description Index

Foreign Patent: CM: A foreign patent which shows or claims your invention will prevent you from making the invention in the US.
Fact: A patent of any country is enforceable only within the geographical area of that country and has no effect elsewhere. Thus, for example, a French patent is enforceable only in France and has no force or effect in the US.
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Patent Marking: CM: If a product is not marked "patented" and it does not have a patent number, you are free to copy the product since the law requires patented products to be marked with the legend "Patented" and the patent number.
Fact: While the law gives certain benefits to those who mark patented products with the patent number, it does not require any form of patent marking, so that even if it has no patent legend, a product may be covered by an in-force patent...
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Promoting Your Invention

Wait Till Issue: CM: It is best to wait until your patent issues before trying to sell or license your invention since a patent will make a favorable impression on companies which might be interested in your invention.
Fact: While there are advantages to selling an already-patented invention, generally it is best to try to sell or license your invention as soon as possible after filing your patent application...
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Success: CM: If you can get a patent, it will make you rich and famous.
Fact: Only a few percent of patentees make money from their inventions. This is probably due to lack of investigation for commercial potential before filing and inadequate promotion after filing.
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Better Invention: CM: If you come up with a better way of doing something, the marketplace will chase after you and make you rich.
Fact: Even the greatest invention needs to be promoted intensively in order to succeed.
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Co. Will Want: CM: If you can get a patent, many companies will want and compete for it.
Fact: Companiesare too busy to look for you and your invention. You have to seek out suitable companies and really sell it to profit from your invention.
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Company Keep Confidential: CM: If you have an invention which you think would be of interest to a large company, you can send a description of the invention to the company under an agreement by which the company will (a) pay you if it uses the invention, and (b) keep it confidential during and after the time it decides what to do with the invention.
Fact: Almost no large company will agree to these terms...
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Big Cos. Steal: CM: Most big cos. Will steal an invention and will not be fair to an inventor.
Fact: By and large most companies are honest. There are exceptions though, so an inventor should always be careful.
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More Detailed Descriptions

Risk of Loosing your Invention

Patent Examiners Steal: CM: Patent examiners in the PTO are on the lookout for good inventions to steal for their own use.
Fact: By law, patent examiners are not allowed to own any part of a patent application; thus they would not be able to copy any invention for their own benefit. While theoretically it would be possible for an examiner to tell a friend or relative about a valuable pending invention, in practice I have never heard of this. Also the owner of the patent application, having already filed an application, would have much stronger rights than a newcomer. Further, every patent examiner sees hundreds of new patent applications every year, and while some may look like very promising innovations, experience has taught them that many apparently-valuable paper inventions do not prove out in practice due to unforseen difficulties. Lastly (see above) it is a crime (perjury) to sign a patent application if you are not the true inventor.
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Buy-up By Companies: CM: Often large companies buy valuable inventions, such as the 100,000-mile tire and the 100-mpg carburetor, at a pittance by defrauding the inventor or so that they can continue to make enormous profits from their inefficient or obsolescent products.
Fact: I have never heard of any successful instance of this and there are valid reasons why it would not occur. First, almost every inventor knows the full value of his or her invention and is unlikely to sell it for far less than it is worth. Most inventions are licensed, rather than sold, so that the inventor will share in any success the invention enjoys. Second, if an inventor were somehow to be persuaded to sell an invention at a pittance, and later sees that his or her corporate buyer is marketing it and making enormous profits, a lawsuit against the company is almost certain to occur; juries in such cases are extremely sympathetic to the defrauded inventor, as was the jury in the !1- !0case, which involved the quick-release socket wrench. Third, and most important, cream always rises to the top: a good invention can't be supressed or hidden for very long since there are thousands of creative people out there seeking the solution to almost every problem under the sun, including the problem solved by the instant invention.
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Old Date Of Conception: CM: If you invented something twenty years ago, but kept it quiet and didn't get around to filing a patent application yet, and you see that someone else has recently received a patent on the same invention, you can still protect your rights if you can prove your earlier date of invention.
Fact: In patent law, the diligent are rewarded and procrastinators tend to lose out. Although you were first, your long delay and the intervening patenting of the invention by another will defeat your rights. In fact, you can even be sued for manufacturing your own invention (if you're not diligent in patenting it) by a later, diligent inventor who got a patent while you were dallying.
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Getting A Patent

Transfer Inventorship: CM: If your father (or another relative) invented something, but didn't do anything with it, he can transfer his rights as an inventor to you and you can apply for a patent on the invention in your name.
Fact: As stated in #1. above, only the true inventor can legally apply for the patent; if you want to obtain another's rights, they must be assigned from the inventor (or the inventor's estate if the inventor is deceased) to you. However the true inventor (or his or her executor or administrator if he is deceased) must still sign the patent application.
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Patent Best: CM: A patent is the best way to monopolize an invention:
Fact: Trade secret may sometimes be a better way of monopolizing your invention.
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Known Invention: CM: If an invention has been publicly known, but has never been patented, it's "up for grabs" so that anyone who discovers it can now patent it.
Fact: According to the law, a patent can be awarded only to the first person(s) to actually invent a new invention. If an invention has been publicly known before, either in a prior publication (including a patent) or by previous manufacture, it is considered "prior art" and can no longer be patented by anyone. If un-patented old things could now be patented, I would have rushed out and patented the wheel years ago.
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Copy Foreign Invention: CM: One can copy a foreign invention and patent it in the US.
Fact: One must be the actual inventor to apply for a patent. Also, once something is patented aborad, it is too late to patent it in the US.
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Patentability If No Inf: CM: If manufacture of your invention will not infringe any prior patent, you can get a patent on the invention.
Fact: Again a confusing of anticipation and infringement--infringement considerations are irrelevant in determining patentability.
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Working Model: CM: It is sometimes necessary to send a working model of your invention to the PTO in order to get a patent on the invention.
Fact: It is never necessary to send a working model unless the PTO questions the operability of the invention (very rare). However many patent attorneys sometimes find it very useful to send such a working model in order to help convince the patent examiner of the value and credibility of the invention and the patent application.
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Claims Most Important: CM: In a patent application, the claims are the most important part and it is essential to get these right; the specification need not be considered critical, so long as it shows the general idea of the invention.
Fact: The specification is more important than the claims in a patent application since an inadequate specification can't be augmented due to the PTO's strict proscription against adding any "new matter" to a patent application. However, unless the application is allowed on the first Office Action (rare), the claims can be amended freely.
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Unclaimed Matter In Patent: CM: Even if your invention is shown in a prior patent, you can get a patent on the invention so long as the prior patent does not claim your invention.
Fact: Again this misconception represents a confusion of anticipation with infringement. For the purposes of determining patentability of your invention, you should treat a prior patent just like any other publication, such as a magazine article, textbook, or even an old comic strip. If the wrist-watch radio shown in old Dick Tracy comics could be used by the Patent and Trademark Office to reject patent applications, so could old patents which may have shown but did not claim the wrist-satch radio. This is because a prior patent (or any other publication) which shows your invention proves that you are not the first inventor and therefore you cannot get a patent on the invention. While the claims of the prior patent are essential in determining infringement, they are totally irrelevant for purposes of anticipation and generally should not even be read when you make a patentability search.
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Effective Invention: CM: The Patent and Trademark Office will not issue a patent unless the claimed invention works more effectively than prior inventions.
Fact: The PTO does not care how well an invention works, so long as it appears reasonably useful. The main criterion in the PTO is whether an invention is sufficiently different from ("unobvious over") the prior art; it does not have to work better than the prior art.
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Expired Patent: CM: If your invention is shown in a prior patent, you can still get a patent on the invention, provided the prior patent has expired. Stated differently, if you are making a patent search, you need merely search back only 17 years to cover only in-force patents since earlier-issued, expired patents will not block your invention.
Fact: There are vast differences between anticipation and infringement, yet these two subjects are probably the most common source of confusion among laypersons. An anticipation is an earlier reference (i.e., � prior publication, such as a patent (in-force or expired), textbook, magazine article, etc.) which shows that the invention was publically known before the filing date of the patent application. The anticipation, by effectively showing that the invention was not original with the the present inventor, will cause the patent application to be rejected or the patent to be invalidated. An infringement, on the other hand, is something which one makes, uses, or sells which falls within the wording of the claims of an in-force patent, i.e, a patent which has issued with the last 17 years. A device which incorporates an improvement invention can infringe an in-force patent even though a patent application on the improvement invention may not be anticipated by the in-force patent. Thus Fleming's diode patent was infringed by de Forrest's triode, yet de Forrest's triode was patentable over the diode.
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Financier: CM: If you want to make your financier a 50% owner of your invention, it is OK to do this by filing the patent application in both of your names.
Fact: A US patent application must be filed in the name(s) of the true inventor(s) only; if any non-inventors are named as inventors, this will subject the patent application to being stricken and can invalidate the patent if the Patent and Trademark Office, a court, or any adversary you encounter discovers the truth. Moreover any non-inventor (or inventor) who signs a patent application knowing non-inventors are named as inventors would be committing perjury since a patent application is made under oath stating that the persons who have signed are the true inventors. There are several legitimate ways to convey an interest in your invention to a non-inventor: you can assign (legally transfer) a percentage of your invention directly to the non-inventor, you can form a partnership or corporation (or other legal entity) and assign your whole invention to the entity in return for an interest in the entity, or you can use a licensing or joint venture arrangement to convey the desired interest.
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Patent Pending: CM: The term "patent applied for" indicates that a patent application on an invention has been officially filed in the U.S. Patent and Trademark Office and the term "patent pending" indicates that the patent application has been examined and approved for patent, but has not yet been granted.
Fact: Both terms have identical meanings, legally and to everyone connected with patents and inventions. Specifically both mean that a patent application on the invention has been officially filed in the U.S. Patent and Trademark Office, but has not yet been granted or officially abandoned; the term gives no indication whatever about the status of the patent application or whether it is likely to be patented. It is a criminal offense to use the words "patent applied for" or "patent pending" in any advertising when there is no active patent application on file.
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Renew Patent: CM: A patent lasts for 17 years, but can be renewed once.
Fact: US patents are not and have never been renewable. (After WWII, special legislation was passed to extend the term of certain patents owned by soldiers, but this was an isolated case. Also, under legislation passed in 1982, all patents are granted for 17 years, but will lapse sooner (after 4, 8, or 12 years) if respective maintenance fees are not paid at least six months before the respective lapse dates. Finally, the terms of drug patents can be extended if part of the patent term was lost due to an FDA regulatory action.
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Post-Office Patent: CM: You can protect your invention adequately by a "post-office patent", i.e., by mailing a description of your invention to yourself by certified mail.
Fact: The use of certified mailers is a very poor substitute for getting live witnesses to sign a description of your invention or even for the PTO's Document Disclosure Program. This is because the courts and the PTO, when called upon to decide a date of invention in a dispute or situation where the date or inventorship is critical, much prefer the testimony or affidavits of live witnesses, who have actually seen and understood the invention, and are available for cross-examination, than some marks left by a rubber stamp on a paper with no live witnesses, other than the inventor (who has a strong self-serving interest).
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Rights that Patents give

Patent Pending: CM: Once your patent application is on file in the Patent and Trademark Office, your "patent pending" can be used to sue or stop infringers.
Fact: A pending patent application confers no legal rights on the patent applicant; it is only when the patent issues that the patent owner is empowered to sue infringers. The "Patent pending" legend is legally without any effect; it is used by patent applicants merely to warn potential copiers that they do so at risk of future liability, starting only when the patent issues.
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Inviolability Of Patent: CM: Once you get a patent on your invention, you can use it to stop all infringers and it can't be taken away from you or defeated.
Fact: Patents and their claims can and often are declared invalid or unenforceable by the PTO or the courts for various reasons, such as relevant prior art which was not previously uncovered, public use or sale of the invention prior to the filing date of the patent application, misuse of the patent by its owner, e.g., by committing antitrust violations, and fraud on the PTO committed by the inventor, e.g., by failing to reveal relevant facts about the invention and the prior art. Also, patents which appear to be infringed may be found not infringed when a careful study is made of the patent and the suspected infringing device.
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Patent As Defense: CM: If you receive a patent on your invention, it will protect you from infringement suits and other legal problems, allowing you to manufacture the invention with impunity for the life of your patent.
Fact: A patent confers no rights on the inventor (or the patent owner), other than the right to exclude others from making, using, or selling the patented invention. As indicated above, if you get a patent on an improvement invention, the owner of a patent on the basic invention can validly sue you for infringement if you make the improvement invention. Also, a patent owner has to be wary of the antitrust laws, product safety laws, ecological laws, etc.
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PTO Action Against Infringers: CM: If someone infringes your patent, you can file a report with the PTO and they will take action for you against the infringer.
Fact: The PTO is totally unconcerned with infringements; the patent owner has the full burden of proving and recovering for infringement by suing the infringer in Federal Court where the infringer resides or has committed infringement. Patent infringement suits are extremely expensive, usually running well over $100,000, so the party with the deeper pocket usually has the advantage. However recent legislation enables some economies in patent litigation to be effected by enabling patent validity questions to be arbitrated or referred back to the PTO for determination.
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Infringement Of Drawing: CM: If your product is clearly shown in the drawing of another's patent, you are ipso facto an infringer of that patent and should immediately cease production or obtain a license from the patent owner.
Fact: Only the claims of a patent determine infringement. The claims are legalistic sentence fragments at the end of a patent which describe the specific invention which the patent protects. Often the claims define an invention which is much narrower than what is shown in the patent's drawings, so you may not have any liability even if your product is shown in the patent's drawings.
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Copy Non-Patented: CM: If you copy a device or circuit, you can be validly sued for infringement, even if the copied device is not patented, so long as your copy is substantially identical.
Fact: You are free to copy any device or circuit, even to the minutest details, so long as you do not infringe any applicable patent, trademark, or copyright.
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Home Use: CM: What you do in your own home or for your own personal use will not infringe a patent which is otherwise applicable.
Fact: While "home infringement" may be difficult to detect, nevertheless it is a form of infringement which is legally actionable and can subject the infringer to paying damages and/or an injunction prohibiting further infringement.
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Claimed Feature: CM: If you get a claim allowed which includes a recitation of an element or feature of your invention, and this claim is valid, you will always be able to enforce this claim against anyone who sells anything with this element or feature.
Fact: A claim must be read in its entirety; if it recites only a single feature of your invention, then it will monopolize this feature and can be used against infringers, no matter how they sell anything with this feature. However most claims recite many elements or features , and thus protect only the of these elements or features, and not any single one of the elements or features per se. Even if a dependent claim (i.e., a claim which refers back to a preceeding claim) recites only a single feature or element of the invention, it will not protect this feature per se since it must be read to include all of the features of the preceeding (independent) claim to which it refers.
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Single Element Of Claim: CM: If you get a claim allowed which includes a recitation of an element or feature of your invention, and this claim is valid, you will always be able to enforce this claim against anyone who sells anything with this element or feature.
Fact: A claim must be read in its entirety; if it recites only a single feature of your invention, then it will monopolize this feature and can be used against infringers, no matter how they sell anything with this feature. However most claims recite many elements or features �� ̂�ӷ��, and thus protect only the ��̂�ӷ�� of these elements or features, and not any single one of the elements or features per se. Even if a dependent claim (i.e., a claim which refers back to a preceeding claim) recites only a single feature or element of the invention, it will not protect this feature per se since it must be read to include all of the features of the proceeding (independent) claim to which it refers.
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Foreign Patent: CM: A foreign patent which shows or claims your invention will prevent you from making the invention in the US.
Fact: A patent of any country is enforceable only within the geographical area of that country and has no effect elsewhere. Thus, for example, a French patent is enforceable only in France and has no force or effect in the US.
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Patent Marking: CM: If a product is not marked "patented" and it does not have a patent number, you are free to copy the product since the law requires patented products to be marked with the legend "Patented" and the patent number.
Fact: While the law gives certain benefits to those who mark patented products with the patent number, it does not require any form of patent marking, so that even if it has no patent legend, a product may be covered by an in-force patent. Thus you should make a patent search or inquire of the manufacturer before copying if you feel a patent could be applicable.
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DDP: CM: By filing a Document Disclosure with the U.S. Patent and Trademark Office (PTO), you will obtain a two-year grace period in which to file a patent application without loss of rights.
Fact: I have never seen a lay inventor who was not confused about the PTO's Document Disclosure Program (DDP). The only purpose of the DDP is to provide you (for a $10 fee) with a reliable witness (the PTO itself) to your conception of the invention; this may prove useful if you ever get into an invention dispute (interference) or want to "swear behind" a cited reference. The DDP provides no grace period, preserves no rights, and has no effect on your patent application. The same results can be obtained for free by getting two reliable persons to sign that they have "Witnessed and Understood" your invention. In fact, using live witnesses is far better in most cases since live witnesses can testify that they have seen that your invention was built and tested successfully, a very important bit of proof in invention disputes.
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Promoting Your Invention

Wait Till Issue: CM: It is best to wait until your patent issues before trying to sell or license your invention since a patent will make a favorable impression on companies which might be interested in your invention.
Fact: While there are advantages to selling an already-patented invention, generally it is best to try to sell or license your invention as soon as possible after filing your patent application. This is because prospective corporate purchasers of your invention will want to get a "head start" on the competition by tooling up and hitting the market before the invention is made public by the issuance of a patent. Also since it usually takes a year or two to tool up and get a product on the market, a year or two of the 17-year patent monopoly will be wasted if tooling is not started until after the patent issues. The prestige of a patent can be compensated for by a favorable search report opinion from a patent attorney stating that the invention is likely to be awarded a patent.
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Co. Will Want: CM: If you can get a patent, many companies will want and compete for it.
Fact: Companiesare too busy to look for you and your invention. You have to seek out suitable companies and really sell it to profit from your invention.
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Company Keep Confidential: CM: If you have an invention which you think would be of interest to a large company, you can send a description of the invention to the company under an agreement by which the company will (a) pay you if it uses the invention, and (b) keep it confidential during and after the time it decides what to do with the invention.
Fact: Almost no large company will agree to these terms; rather, before even looking at your invention, they will require you to sign agreement (called a waiver form), under which you must agree that (1) the company has no obligation of confidentiality to you, and (2) the company is not bound to pay you anything, even if they use your invention, unless their use of infringes a patent which you own. Most companies use the waiver form on the advice of their attorneys because they have been burned by suits from inventors claiming violation of a confidentiality agreement or an implied agreement to pay if the invention is used, even though the company's own inventor may have come up with the invention independently of the outside inventor.
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