Karen Dana Oster's Answers

Should I hire a new lawyer to amend my patent app? My lawyer did a prior art search but my app was rejected due to prior art.

Most applications (90% plus if you exclude design patent applications) have all the claims rejected in the first Office action. This is at least partly because of the way Examiners get credit in the USPTO. For new applications they can get a total of two points - one for a first Office action and one for "disposing" of (allowing or finally rejecting) the case. If the Examiner grants a first Office action allowance, he only gets one point for that case. Because of this point system there...

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I have an idea for a product, though it has a similar use to another patented product

Patentability and Infringement are two separate issues. Since the other product is patented, you should verify that you do not infringe the patent. If the patent has expired, you cannot infringe it. If the maintenance fees have not been paid, you cannot infringe it. If the patent is still enforceable, you may want to have an attorney review the claims to verify that you do not infringe. To get a patent your product would have to be (1) patentable subject matter, (2) not "anticipated"...

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How significant a modification, must be made to an existing patented design in order for you to bypass that patent?

Seamus, Your question needs to be answered in two parts. First, you ask "how significant a change, or modification, must be made to an existing patented design in order for you to bypass that patent?" There is no specific answer to this. To provide an analysis you would have to review the "prior art" references that pre-date the patent at issue. If the prior art references are close, you may not have to modify your product significantly. The second part requires some explanation....

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I have a patent pending. Can it be infringed upon?

If you have reason to believe that someone is would be infringing (e.g. making, using, selling, or importing) your patent claim (design patents only have one claim) if it were to issue, you may be entitled to file a "petition to make special." Under some circumstances this may help to expedite the patent prosecution process. Since your application was filed recently you may want to look into filing such a petition.

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Patenability bassed on novel effect rather than structure

Assuming that you were asking a general question about "what is patentable," my general answer is going to depend on how the invention can be characterized in the claims. This means that you might be able to characterize your invention as a "method" (manufacturing or using). But how to claim an invention is so highly dependent on the specifics that it would be impossible to do any analysis. A proper analysis should take into consideration would determine the "obviousness" (which is a...

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New product idea for an established company

To be patentable at all, your idea would have to be patentable subject matter, new (not anticipated), and non-obvious. These are all "patent lingo" and don't necessary mean what a layman thinks it means. If your product idea is patentable, however, you could file a provisional patent application so that you could say "patent pending." A provisional patent application is a less formal version of a traditional patent application. To have value, however, your provisional application should...

Regarding Patent for existing invention

I wanted to add to the previous attorneys' anwers that you could do some of your own research. I have a handout that will provide you with information on how to do this (see http://www.kdopatent.com/searching.html). Please note, however, that your search should be considered only a "knock-out" search in that if you find your improvement has been previously invented then you could choose not to pursue it, but just because you cannot find it does not mean that it does not exist. Good luck!

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What the cost to patent a product

Generally the cost is highly dependent on the invention and the work that nees to be done. I have a calculator that allows you to calculate the fees for FILING the applicaiton (although not the downstream costs. This can be found at www.oregonpatent.com/calculator. Most patent attorneys do not take percentages.

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I'm considering filing a patent for a software I'm writing, but I need to ask the questions before I can proceed.

What a patent "covers" is determined by the "claims" of the patent. These are the numbered "sentences" at the back of the patent. In addition, sometimes more than one patent covers the same invention. Reviewing patent claims and your intended product/process is a specialty that takes many years to learn. Before you begin undertaking any of the activities that would constitute infringement (e.g. making, using, selling), I highly recommend that you seek patent counsel skilled in preparing...

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Do patents become public after 20 years?

For most patents that are still enforceable the "term" of the patent is either 20 years from the filing date of the application (or its priority document(s)). There may still be a few patents that have a term of 17 years from issuance (the patent issue date). Some patents also are entitled to extensions because of delays that occurred during "prosecution" (the process of obtaining the patent). A patent attorney should be able to review the patent and tell you the actual expiration date if it...

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