Steps to Filing a Patent Application: Here's a quick look at the basic steps you need to take before filing a patent application. Nothing about

the process requires a lawyer -- there's no court, no judge, no "legal" research. The USPTO has specific rules, but you can follow them just as

you would a recipe in a cookbook.

1. Keep a Careful Record of Your Invention: Record every step of the invention process in a notebook. Describe and diagram every aspect

and every modification of the invention, including how you came up with the idea for it. Depending on the invention, you may also want to

build and test a prototype. Document all of these efforts. Sign and date each entry and have two reliable witnesses sign as well.

2. Make Sure Your Invention Qualifies for Patent Protection: You cannot get a patent just on an idea. You must show how your invention

works and your invention must be new. This means it must be different in some important way from all previous inventions. It also cannot be

for sale or be known about before you apply for a patent. To learn more, see Qualifying for a Patent FAQ.

3. Assess the Commercial Potential of Your Invention: Applying for a patent is a business decision. Even without a patent attorney or the

use of professionally prepared patent drawings, it costs approximately $1,500 in fees to file and obtain a patent from the USPTO. Before you

spend the time and money to file a patent application, you need to research the market you hope to enter and decide whether it's worth the

outlay of funds.

4. Do a Thorough Patent Search: To make sure your invention is new, you need to search all the earlier developments in your field. This

involves searching U.S. (and sometimes foreign) patents, as well as other publications like scientific and technical journals, to find related

inventions.

Although patent searching is time consuming, it can be mastered with practice. Even if you decide to hire a professional later on in the

process, you know the most about your invention, so you are the best person to start the search. You can start your research on the Internet,

but you may also want to visit a Patent and Trademark Depository Library, where you can search earlier patents and get help from a

librarian. For more information, see Patent Searching Online. When you search, you will certainly find other inventions that are similar to

yours. In your application, you should show how your invention improves upon or is different from these earlier developments.

5. Prepare and File an Application With the USPTO(united states patent trademark office)

When you file with the USPTO, you can either file a full-blown regular patent application (RPA) or a provisional patent application

(PPA).

Provisional patent application (PPA): A PPA is not an actual application for the patent itself. Filing a PPA simply allows you to claim patent

pending status for the invention and involves only a small fraction of the work and cost of a regular patent application. All that is required to

file a PPA is a fee ($65 for micro-entities, $130 for small entities and $260 for large companies), a detailed description of the invention, telling

how to make and use it, and an informal drawing. Then, you must file an RPA within a year of filing the PPA. If you don't, you can no longer

claim the PPA filing date.

Patent Search: Google patent search, USPTO, IPINDIA, GPSN(Global Patent Search Networks), Patent fetchers, WIPO(World Intellectual

property organization), ESPACENET, EPO.org, PatentsScope, patentssearcher, innography, Patexia Prior art research, EPO(European Patent

Office)

Software: patbase(misesoft), orbit, TI

Intellectual property law deals with the rules for securing and enforcing legal rights to inventions, designs, and artistic works. Just as the law

protects ownership of personal property and real estate, so too does it protect the exclusive control of intangible assets.

Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in

commerce. Intellectual property is divided into two categories: Industrial Property includes patents for inventions, trademarks, industrial

designs and geographical indications.

A patent (/ˈpætənt/ or /ˈpeɪtənt/) is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time

in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem and is a product or a

process.

Patent: Monopoly govt. gives you as the inventor of some new device, construction, method or process. It allows to use, manufacture and sell.

There are three kinds of patents:

Utility patents(20 years): These protects useful feature of invention.

Design patents(14 years): Protects how a structure looks (earphones)

Copy Right: Is a limited monopoly given to artists for their creative works.

Trade mark: Is anything you use to identify your goods or services in commerce. Ex. Placing your Signature.

After the patent expires, anyone may make, use, offer for sale, sell or import the invention without permission of the patent owner, provided

that subject matter is not covered by an unexpired patent. Certain pharmaceutical patents may be extended as provided by law.

An intellectual property infringement is the infringement or violation of an intellectual property right. There are several types of intellectual

property rights, such as copyrights, patents, and trademarks. Therefore, an intellectual property infringement may for instance be a

Copyright infringement

Patent infringement

Trademark infringement

1. Criminal offences (counterfeiting and piracy)

Infringement of trade marks and copyrights can be criminal offences, as well as being actionable in civil law. A range of criminal provisions

are set out in the relevant Acts, and other offences such as those under the Fraud Act 2006 may also be applied. These criminal offences are

most often associated with organised crime groups who are dealing for profit in fake branded goods or pirated products. However, these

offences can also occur in legitimate business, for example if an employee uses the workplace to produce and/or sell quantities of fake DVDs

or branded goods to colleagues or outside the office.

1.1. What is criminal intellectual property (IP) rights infringement?

Criminal IP offences are also known as “IP crime” or “counterfeiting” and “piracy”. Counterfeiting can be defined as the manufacture,

importation, distribution and sale of products which falsely carry the trade mark of a genuine brand without permission and for gain or loss to

another. Piracy, which includes copying, distribution, importation etc of infringing works, does not always require direct profits from sales -

wider and indirect benefits may be enough along with inflicting financial loss onto the rights holder. For example possession of an infringing

copy of a work protected by copyright in the course of your business may be a criminal offence under section 107 (1)(c) of the Copyright,

Designs and Patents Act 1988.

Not all cases that fall within the criminal law provisions will be dealt with as criminal offences and in many cases business to business type

disputes are tackled by the civil law. Further information is available on what is the law and the guide to offences.

1.2. What does infringement mean

“Infringement” is a legal term for an act that means breaking a law. IP rights are infringed when a product, creation or invention protected by

IP laws are exploited, copied or otherwise used without having the proper authorisation, permission or allowance from the person who owns

those rights or their representative.

It can range from using technology protected by a patent to selling counterfeit medicines/software or copying a film and making it available

online.

All of these acts will constitute a civil infringement but some copyright and trade mark infringements may also be a criminal offence such as

the sale of counterfeits including clothing.

1.3. How will action be taken against you

Trading standards are primarily responsible for enforcing the criminal IP laws, with support from the police, and with investigative assistance

from the IP rights owners. Private criminal investigations and prosecutions may also be launched by the right owners in some cases.

Criminal IP offences may be taking place in your workplace in a variety of ways. These include:

employees selling copies of protected works or supplying fake goods within the working environment

company servers and equipment being used to make available (i.e. uploading) infringing content to the internet with the

knowledge of management

using the work intranet to offer for sale infringing products to colleagues

external visitors entering your premises, to sell counterfeit and pirated items

using unlicensed software on business computer systems with the knowledge of management

Not only can IP crime make you and your business liable to a potential fine of up to £50,000, and a custodial sentence of up to 10 years,

counterfeiting and piracy can affect your business security and reputation, threaten your IT infrastructure and risk the health and safety of your

staff and consumers.

2 Risks for business

IP rights infringement and in particular IP crime threaten legitimate businesses, their staff, and undermines consumer confidence. Your

business may face a number of risks if you do not take appropriate steps to tackle IP crime within your working environment.

Failure to address the problem could leave you and your business liable and at risk to criminal and/or civil action. Under civil law you may be

subject to court action and have to pay damages. Criminal action may lead to unlimited fines, or a custodial sentence (which could be up to a

maximum of 10 years). You may also be vulnerable to threats from computer viruses and malware.

You need to think about not only the way your business is conducted, but also be aware that the behaviour of your staff – and their actions at

work may also incur liability for the organisation as a whole.

2.1. Legal liability

Activities which results in IP rights being infringed can raise both civil and criminal law liabilities. In some cases these activities may relate to

something done directly by the business. In other instances it may relate to an independent action of a member of staff at work.

2.2. Security risks

There are many security risks to a business from IP crime. These include the infiltration of viruses and malware which can aid identity theft,

threaten system security and slow down IT networks.

2.3. Reputational risks

Good businesses attract respect and the trust of future partners. Adverse publicity relating to any civil or criminal court action could affect

how other businesses view you and how they choose to deal with you.

2.4. Resource implications

IP crime can impact on the productivity of your business. Resource implications, such as staff neglecting work tasks to carry out illegal

activities, and IT system failure due to malware problems, can have a detrimental affect.

3. Potential problem areas

IP rights are unfamiliar to many and can be complicated. One item can be protected by a number of different IP rights, which can be infringed

in different ways. A music CD will have copyright in the music, so-called “mechanical” rights in the recording, design rights in the cover, and

well-known brands often register their names as trade marks.

In order to protect your business, and avoid serious legal and security risks, it is important:

to understand how IP rights infringements can occur

to have a strategy for avoiding them, and

to know how to address such a problem if it arises

To assist in identifying instances where IP rights infringement can occur, a range of activities and examples have been identified. Advice is

available on steps to help you deal with an IP rights infringement in your business.

3.1. Business activities

A business can infringe the IP rights of others by not having the correct licence to support the activities that take place within the business.

3.2. Staff activities

Staff infringing IP rights at work can impact productivity, put your systems at risk from malware and put you and your business at risk of

legal liability for their actions.

3.3. People visiting your workplace

Letting traders onto your premises to sell items to your staff could leave your business facing legal liability. It can also compromise your site

security plans.

There are many more potential problem areas, therefore it is vital that you and your business understand how these problems might arise, so

you can take steps to avoid them.

4. Dealing with infringement

The needs of businesses will vary. What is right for a factory unit or a small office may not suit larger more complex organisations. The

common thread is that doing nothing is not a sensible option given the risks it can pose for you and your business. Whether your business is

small or large there is a range of actions you can take to make sure that IP rights infringement is not occurring within your business

environment.

Preventative steps will help to safeguard you and your business, but once infringing activities have been identified, a fast and effective

response is essential. You therefore need to be prepared, even if you are not currently aware of any such problems in your business.

Clear processes and procedures will help you to embed respect for IP with managers and staff, creating the right company ethos and ensuring

that you identify potential problem areas and manage them properly.

Staff and managers need to understand what IP is, how IP rights can be infringed and the risks this can pose - both for them and for the

business. Staff in corporate functions, such as Human Resources (HR), Information Technology (IT), finance and procurement have a

particularly important role to play in spreading information and good practice.

4.1. Preventative procedures and policies

Guidance is available on the procedures and processes you and your business can adopt to prevent infringement occurring. Information

includes: HR policies, license management and processes for site visits. Advice on what to do if you identify any criminal IP offences relating

to IP rights infringement taking place in your business is also covered.

4.2. Raising awareness within your business

Practical tools have been developed to help you educate staff and management about the importance of IP and how to comply with the

relevant law. These include sample slide packs to help raise awareness and improve understanding.

5 Civil Infringement

The infringement of an IP right is a civil matter in the case of patents, trade marks, designs and copyright. In the case of trade marks and

copyright the act may also constitute a criminal IP offence.

There are many potential problem areas, therefore it is vital that you and your business take action to avoid these problems. Advice and

guidance on dealing with IP rights infringement is available.

5.1. How to avoid infringement

It is important that you and your business take preventative steps to avoid infringing the IP rights of others by seeking permission - which

usually means obtaining a licence for the activity.

5.2. How will an IP rights owner take action against you

If you are believed to be infringing IP rights, the owner may wish to take action through the civil courts; other methods can also be used, such

as mediation, the use of “cease and desist” letters or by seeking to use other services in resolving disputes.

You may be liable for damages relating to any infringement.

6. Copyright infringement

Copyright owners generally have the right to authorise or prohibit any of the following things in relation to their works:

copying the work in any way. For example, photocopying, reproducing a printed page by handwriting, typing or

scanning into a computer, or making a copy of recorded music

issuing copies of the work to the public

renting or lending copies of the work to the public. However, some lending of copyright works falls within the Public

Lending Right Scheme and this lending does not infringe copyright

performing, showing or playing the work in public. Obvious examples are performing plays and music, playing sound

recordings and showing films or videos in public. Letting a broadcast be seen or heard in public also involves

performance of music and other copyright material contained in the broadcast

broadcasting the work or other communication to the public by electronic transmission. This includes putting copyright

material on the internet or using it in an on demand service where members of the public choose the time that the work

is sent to them

making an adaptation of the work, such as by translating a literary or dramatic work, transcribing a musical work and

converting a computer program into a different computer language or code

Copyright is infringed when any of the above acts are done without permission, whether directly or indirectly and whether the whole or a

substantial part of a work is used, unless what is done falls within the scope of exceptions to copyright permitting certain minor uses.

Copyright is essentially a private right so decisions about how to enforce your right, that is what to do when your copyright work is used

without your permission, are generally for you to take.

Deliberate infringement of copyright on a commercial scale may be a criminal offence.

7. Patent infringement

Infringing a patent means manufacturing, using, selling or importing a patented product or process without the patent owner’s permission.

The owner of a patent can take legal action against you and claim damages if you infringe their patent.

7.1. How to avoid infringing

Patent applicants have to provide a full description of the invention. You can ask us for an opinion to check if what you want to do would

infringe a particular patent. If it would infringe, you may be able to agree terms with the owner, or even buy the patent from them.

You can check our database of patents that are currently Not in Force

If you are infringing get professional advice quickly from a patent attorney or solicitor, because the owner can sue you.

7.2 . What if someone sues you for infringing

There are two basic types of defence if someone claims you are infringing their patent:

You are not infringing - what you are doing does not infringe their patent claims, or the patent is invalid - you can take legal action to

challenge the validity of the patent. If you win, their patent may be cancelled (revoked). The loser usually has to pay both sides’ costs, so think

hard before starting legal action. If someone intends to sue you for infringement, you can try to reach agreement with them on using their

patent. Get professional advice from a patent attorney or solicitor, but do not do or say anything yourself.

8. Design infringement

By registering a design the proprietor obtains the exclusive right for 25 years (provided renewal fees are paid every 5 years) to make, offer,

put on the market, import or export the design, or stock the product for the above purposes.

These rights are infringed by a third party who does any of the above with the design, for commercial gain.

8.1. How to avoid infringing

The Intellectual Property Office (IPO) can not advise you on whether your design would infringe an existing design. If you are concerned that

you may be infringing, you may wish to obtain professional advice from a patent attorney, trade mark attorney or a solicitor. If you are

infringing you should be aware that the owner may be able to sue you. The legal practitioner may also be able to advise you on agreeing, if it

is possible, some form of terms between you and the owner of the registered design (such as licensing the right to use the design or buying it

from them).

8.2. What if someone sues you for infringing

There are two basic types of defence if someone claims you are infringing their design:

you are not infringing - what you are doing does not infringe their design, or

the design is invalid - you can take legal action to challenge the validity of the design. If you win, their design may be

cancelled (invalidated). The loser usually has to pay the legal costs of both sides, so think hard before starting legal

action. If someone intends to sue you for infringement, you can try to reach agreement with them on using their design.

8.3. I think someone else maybe infringing, what should I do

Get professional advice. You may be able to get a court order to force the infringer to cease trading. You should then consider whether to

negotiate or to take legal action for compensation. However, infringement actions must be taken to the High Court of England and Wales, the

High Court of Northern Ireland or the Court of Session in Scotland. The IPO does not handle such actions.

8.4. How to avoid infringement

It is important that you and your business take preventative steps to avoid infringing the IP rights of others by seeking permission - which

usually means obtaining a licence for the activity.

8.5. How will an IP rights owner take action against you

If you are believed to be infringing IP rights, the owner may wish to take action through the civil courts; other methods can also be used, such

as mediation, the use of “cease and desist” letters or by seeking to use other services in resolving disputes.

You may be liable for damages relating to any infringement.

9. Trade mark infringement

If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the

registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities

between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and

the same trader.

Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which,

although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from

the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.

9.1. What about unregistered trade marks

There is no available remedy for trade mark infringement if the earlier trade mark is unregistered. Some unregistered trade marks may be

protected under Common Law and this is known as Passing off. However, whether or not they are protected will depend on the particular

circumstances, in particular:

Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the date of commencement of the use of

the later mark; Whether the two marks are sufficiently similar, having regard to their fields of trade, so as to be likely to confuse and deceive

(whether or not intentionally) a substantial number of persons into thinking that the junior user’s goods and services are those of the senior

user; The extent of the damage that such confusion would cause to the goodwill in the senior user’s business.

9.2. I think that I may be infringing, what should I do

Get legal advice. There may be a number of potential courses of action or defences open to you, but this will very much depend on the

particular circumstances of your case.

Some traders who think they may be infringing an earlier trade mark choose to cease trading under the offending sign, others choose to

approach the earlier trade mark owner and attempt to negotiate a way forward that suits both parties, which may include a co-existence

agreement.

If you decide that you are not infringing, or you have a good defence, you may decide to stand your ground or even to sue the trade mark

holder for making unjustified threats. In the worst case scenario, you may have to change your trade mark and re-brand your products or

services.

9.3. I think that someone else may be infringing, what should I do

Get legal advice as the most suitable course of action will depend on the particular circumstances of your case.

One potential option open to you is to write to the infringer. However you must be satisfied that the earlier trade mark that you own and the

activities of the infringer justify this. This is because the law also protects traders from unjustifiable threats of trade mark infringement.

You may be able to negotiate a settlement which suits both parties, which may involve a co-existence agreement. Another option is that you

may be able to get a court order to force the infringer to cease trading and pay compensation for damages. However, infringement actions

must be taken to the High Court or in Scotland, the Court of Session. We do not handle such actions.

10. What is a coexistence agreement

A coexistence agreement is a legal agreement whereby two parties agree to trade in the same or similar market using an identical or similar

trade mark.

The agreement is drawn up between parties and sets the parameters for each to use their trade mark without the fear of infringement or legal

action from the other(s).

The coexistence agreement set the terms and conditions the parties have agreed, to allow each other to undertake their respective business

activities.

Whilst coexistence agreements may take many forms, and may also include designs, copyright and patents, entering into a formal binding

coexistence agreement will ensure that the parties avoid the likelihood of becoming involved in any future costly and lengthy legal dispute.

The specific details of a coexistence agreement is a matter only for the parties involved to negotiate and the IPO cannot become a party to the

negotiations.

11. Organisations representing copyright owners

Many groups of copyright owners are represented by a collecting society. A collecting society will be able to agree licences with users on

behalf of owners and will collect any royalties the owners are owed. In many cases a collecting society will offer a blanket licence for all the

works by owners it represents, for example for music to be played in a shop or restaurant.

There are many collecting societies who operate for various types of copyright material:

printed material

artistic works and characters

broadcast material

TV listings

film

12. The copyright tribunal

The Copyright Tribunal is an independent tribunal established by the Copyright, Designs and Patents Act 1988. Its main role is to adjudicate

in commercial licensing disputes between collecting societies and users of copyright material in their business. It does not deal with copyright

infringement cases or with criminal “piracy” of copyright works. Copyright infringement can be dealt with in the civil courts such as the High

Court (Chancery Division), the Intellectual Property Enterprise Court and certain county courts where there is also a Chancery District

Registry. Criminal matters are dealt with in the criminal courts. Where parties are unable to reach agreement in commercial licensing disputes

they might also wish to consider, as an alternative to the Copyright Tribunal, mediation services.

13. Professional advice

Legal professionals who specialise in IP are useful in helping you to understand, obtain and defend your IP rights. Details of professionals in

your area can be obtained from any of the following organisations:

Institute of Trade Mark Attorneys (ITMA)

Chartered Institute of Patent Attorneys (CIPA)

Law Society - Can provide details of suitable solicitors in your area

Bar Council - Can provide details of barristers licensed for public access

13.1. Other sources of advice include:

GOV.UK can provide advice on exploiting your ideas

Enterprise Europe Network(EEN) are a European wide network, with a number of centres in the UK. Each can provide

consulting services on IP rights

NESTA The National Endowment for Science, Technology and the Arts provide a useful handbook on invention and

innovation

There are a number of other organisations geared specifically to helping inventors, especially lone inventors, to bring their ideas to market,

and to provide advice on finding financial assistance. For example, The Institute of Patentees and Inventors (IPI) is a non-profit making

organisation that specifically helps lone inventors.

14. Annual ip crime report

The latest IP Crime Report 2012/13 was published on 29 July 2013. The report highlights current and emerging threats surrounding

counterfeiting and piracy, including those conducted via the internet. The report also contains statistical data and enforcement activities from

UK law enforcement agencies such as trading standards, police and HM Revenue and Customs along with industry bodies

15. Reporting intellectual property crime

If you have concerns or are aware of any person that may be involved in IP crime, then you may report this through your local trading

standards service - who are the leading authority enforcing IP legislation - via Citizens Advice Bureau and/or the anonymous reporting system

of the charity CrimeStoppers and Action Fraud

People involved with IP crime are generally involved with other types of crime such as benefit fraud, drugs and people trafficking. Therefore,

it is imperative that you report any instance of IP crime that you are aware of, to the enforcement authorities.