Patent Talk
February 1971 Radio-Electronics

February 1971 Radio-Electronics [Table of Contents] Wax nostalgic about and learn from the history of early electronics. See articles from Radio-Electronics, published 1930-1988. All copyrights hereby acknowledged.

If you wanted to review a patent back in 1971, when this "Patent Talk" article appeared in Radio-Electronics magazine, you would need to submit a written request to the U.S. Patent and Trademark Office (USPTO) in Washington, D.C., and submit a payment to cover the cost. Sometime in 1999, the Patent Full-Text and Image Database (PatFT) was made available on the World Wide Web (WWW, aka the Internet), in a TIFF graphical file format. Google Patents came along around the end of 2006; it was a much more user-friendly search system (still is - here is patent US3,373,315A from this article). The USPTO has put a lot of effort into making the patent application process simpler - even approachable by non-lawyers. Hiring a patent application law firm is probably the easiest - even the best - path toward a patent application in terms of competent, legally defensible results. Electronics trade magazines and handyman-type magazines (Popular Mechanics, Popular Science, etc.) used to be chock full of ads by companies offering to help people get their ideas patented. There are undoubtedly dozens of successfully patented "200 Miles-Per-Gallon Carburetors" available for Detroit manufacturers to avail themselves of - if only the oil companies would stop paying them to not use them ;-) .

Patent Talk

By Arthur S. Cookfair

It was just two minutes before game time when Jim settled down in front of the TV. The sound of the door chimes brought a warning that his plans were about to be interrupted. The caller was his next door neighbor.

"Hi Fred. Come in, you're just in time for the game."

"No thanks. I haven't got time. I just want to get some information. You know I fool around with radio and I was working with my rig the other day when I got a great idea for a new type of antenna. So I figured that since you're a patent attorney, maybe you could tell me . . ."

After a typical week of working out arguments to convince patent examiners that this or that client's invention was the greatest thing since DeForest added a grid to the vacuum diode, Jim was in no mood to hear about another "great idea" - and the game had just started. He countered quickly, "Why don't we go in and watch the game and you tell me all about your idea afterward?"

Fred wasn't going to be sidetracked that easily. "Let me tell you about this first, Jim. It will only take a few minutes." He had that all too familiar look of the inventor with just one thing on his mind - his "great idea." Jim knew there was no sense trying to dissuade him.

"Go ahead." he said weakly.

Fred glowed. "Well, you see I've got this idea for a new type of variable length mercury-column antenna that can be tuned to a hair's breadth and I figured I might as well get a patent on it. I thought that you could tell me where I can get the necessary application forms so that I can get a patent right away."

"Wait a minute, Fred. It's not quite that simple. You don't just fill out an application and get a patent automatically."

By this time they had settled down on the front steps and Jim could feel his chances of seeing that game getting more and more remote.

"Fill me in, Jim. What's the procedure?"

"First of all," Jim said, "it's best to have a patent search made to find out if your idea is new."

Like many inventors, Fred was so convinced of the novelty of his invention that he couldn't conceive of anyone having thought of it before him.

"I keep up on the latest hardware in this field" he explained, "and I'd know if anyone had an antenna like mine on the market."

"No doubt," said Jim, "But remember that in the last 175 years the U.S. Patent Office has granted more than three million patents. Many of them are good ideas that for one reason or another were never marketed. Sometimes an inventor will get a terrific idea but find that he can't get anyone interested in it. For instance, when Richard Carl- son received his patent on xerography, he took it to twenty companies over a period of five years before he got anyone interested in developing the idea. A less persistent inventor might have given up, but the patent would still be in the records. Sometimes an inventor is just too far ahead of his time. Supposing someone patented an antenna like yours back in the early I 900's. when radio was just getting started. The idea might have been ignored and then forgotten because the world of electronics wasn't ready for it."

Fred looked surprised. "Would that stop me from getting a patent on it?"

"I'm afraid so. You see, if the same idea was available to the public or appeared in a printed publication (such as a patent) before your invention of it, you are not entitled to a patent."

"What if I disclose the invention myself?" Fred asked. "I've been thinking of making a few of these antennas and selling them. Do I have to apply for a patent first?"

"No, but you must apply for a patent within 12 months after your first public use, disclosure or sale. After that you are barred from getting a patent."

"Can I make some models and mark them Patent Pending' since I'll probably file a patent application within a year?"

Jim responded with an emphatic "No." and went on to explain that terms such as "patent pending" and "patent applied for" can only be used to inform the public that a patent application is already on file in the United States Patent Office. Misuse of such terms can result in a heavy fine.

"What if someone else tries to patent the same invention?" Fred asked. "Who gets the patent?"

 "When two inventors file separate applications on the same invention," Jim answered, "the Patent Office starts a procedure called an 'interference'. This is an investigation to find out which applicant made the invention first and is legally entitled to a patent. Each party may be called on to prove his date of invention."

"I've heard that I can establish proof of my date of invention by describing it in a letter, sending it to myself by registered mail and then keeping the letter unopened until it's needed for proof. Is that a good idea?"

"It's not a good idea." Jim replied. "It is a common misconception that you can protect your invention that way. But you should keep good written records of your ideas and experiments and have a trustworthy friend follow your progress and read and witness your records. If you should have to prove your date of invention later on, that person can corroborate your statements. It's also a good idea to keep records of purchases and other correspondence relating to your invention."

"Do I have to send a model of the antenna to the Patent Office?"

"It's not likely." Jim replied. "The Commissioner of Patents has the authority to require a model, but it is seldom asked for - except in cases where the Patent Examiner has reason to doubt that an invention will work, for example, where the invention is supposed to be a perpetual motion machine." "What information do I have to reveal in a patent application?" Fred asked.

"The patent laws require that you provide a written description of your invention in sufficient detail so that a person of reasonable technical skill (electronics technology in this case) could make and use the invention from your description. You're also required to point out what you think is the best way of carrying out your invention."

"Why is it necessary for me to give away so much information about my invention?"

"It isn't exactly a give-away." Jim explained. "It's more like an exchange between you and the public. You see, the idea behind our patent laws is that you, as the inventor, disclose your invention in return for the grant of a patent. The patent gives you a monopoly on your invention for 17 years. In return, you have supplied the necessary information so that after your patent has expired others will be able to practice your invention."

"It sounds as if a patent application might be difficult to write." Fred remarked. "Do I need legal help or can I do it myself?"

"An inventor is legally entitled to handle his own patent application. However very few do." Jim explained. "It takes a good deal of know -how in patent law to do an effective job. A famous judge once said that a patent application is one of the most difficult of all legal documents to prepare. The Patent Office, while permitting an inventor to handle his own case, recommends that he seek the aid of a registered patent agent or patent attorney."

"How long does it take before a patent is granted?"

"The average time is about two and one half years."

"Why so long?"

"The Patent Office receives more than 1600 patent applications each week. At present there is a back -log of about 200,000 applications and it takes about a year before an application comes up for action by a Patent Examiner. The examiner must study the application from both a technical and legal standpoint and make a search of the patent and technical literature to determine patentability. Then there is an exchange of opinions and arguments between the Patent Examiner and the applicant (or his attorney or agent) as to the patentability and the exact definition of the invention. The outcome is either a rejection (which may be appealed) or the granting of a patent. The Patent Office issues more than 1000 patents each week (somewhat more than half of the applications filed.) Incidentally, a patent search before filing is a great help in determining the chances of getting a patent.

"A patent application on your invention," Jim went on, "would probably be assigned to a Patent Examiner who is an expert on antennas. You see each examiner is a specialist in some area of technology as well as in patent law."

"Supposing I get a patent on my antenna," Fred questioned, "and someone infringes on my patent. Will the Patent Office help me prosecute the infringer?"

"No." explained Jim. "The Patent Office doesn't have jurisdiction over infringement matters. It would be up to you to sue the infringer in a U.S. Court."

"Would the patent give me protection in other countries?"

"I'm afraid not. Each nation has its own patent laws. A United States patent can protect your invention only in this country. To obtain protection in other countries you would have to get a patent in each country - and that can be pretty expensive."

After a thoughtful pause, Fred responded, "It looks as if there's a lot more to patenting than I had imagined. It would probably be a good idea for me to learn a little more about patents before I go ahead with my invention. Where can I get more information?"

"I have some material in my desk that would be helpful." said Jim, as he disappeared through the door. He returned a minute later and handed Fred some pamphlets. "These are government pamphlets relating to patents. They are written for inventors like yourself and they offer a great deal of basic information and advice on the subject."

A quick glance at his watch told Jim that the game must be nearly over. With a barely audible sigh of disappointment, he said: "I hope the pamphlets will be of some help."

"Thanks. Maybe this information will help me decide whether to try to patent my antenna.

"By the way Jim, I've been recording the game on my new video tape recorder. How about coming over to my place - I'll fix a couple of cold drinks and we can watch the play-back."

The following patent pamphlets may be purchased from the Superintendent of Documents, Washington, D.C. or through any field office of the U.S. Department of Commerce:

General Information Concerning Patents $ 30 Patents and Inventions, An Information Aid For Inventors $15

How To Obtain Information from U.S. Patents .... $.20

A single copy of the pamphlet: "Answers to Questions Frequently Asked About Patents" can be obtained free of charge by writing to The U.S. Patent Office, Dept. of Information, U.S. Department of Commerce, Washington, D.C. 20230.