WHAT IS A PATENT? 
What every WBE should know…

Patents can be used as:

• Marketing tools
• Assets
• A source of licensing income
• As a tool for market protection

To be patentable, an invention must fall within at least one of the following categories:

• An article of manufacture
• A machine
• A process
• A composition of matter (a chemical compound)
• An improvement of any of the above
• An ornamental design of an article of manufacture

Additionally, patentable inventions must be:

• New
• Useful
• Non-obvious

Abstract ideas and scientific principles cannot be patented. They must first be embodied in a device or process that falls into one of the above classes. Software can be patented if it can be described as an embodiment of such a device or process.

An invention is "new" unless:

• It was first invented by someone else
• It was described in a publication anywhere in the world more than one year before a patent application was filed
• It was put in public use or on sale in the United States more than one year before a patent application was filed
  

An invention is "useful" if it accomplishes its intended purpose - that is, if it works. Most inventions (except perpetual motion machines!) pass this test without difficulty.
An invention is "non-obvious" if the differences between the invention and the earlier work of others are such that the invention would not have been obvious to a person with ordinary skill in the art ("art" means the technology to which the invention relates).

Why apply for a Business Methods Patent?
There are four (4) basic reasons:

1. Marketing Tool – The Applicant can for eleven (11) months state that it has "proprietary business methods with protection in 130+ foreign countries and the United States" in all marketing literature, trade shows, press releases and business cards.
2. Asset – The Applicant may want to improve its valuation by increasing its portfolio of assets and thereby increasing net worth. An Applicant may want to use the patent application as its contribution for a joint venture project so that money does not have to be provided by the Applicant to the joint venture.
3. Licensing Income and Industrial Intelligence – By licensing the patent application to others in a complimentary field, the owner of the technology can get revenue (typically $25,000 - $125,000 per year) and obtain marketing reports and other industrial intelligence from the licensee.
4. Protect Market Share – A patent applicant will typically file for a patent in addition to other patents and trademarks to simply keep competitors out of its market share.

Most patents typically have these costs over three years:

Year One (1)

Cost to draft case, filing fee, express mail, receipt and forwarding of filing receipt -- about $4,500 - $7,500, depending on how well documented the method is by the inventor.

Year Two (2)

Cost to respond to first office action, docket it without taking extensions of time to respond -- about $2,300 - $3,400.

Year Three (3)

Cost to respond to second office action and docket it -- $2,500-$5,500, review the Notice of Allowance, and pay drafting fees, review issue fee papers, pay issue and publication fee, and correspond with Applicant -- about $2,500 - $5,000, if the Applicant has a company size of less than 500 people, 20 or less claims are involved in the application, and the number of formal drawings required.

Maintenance fees must be paid 3.5, 7.5 and 11.5 years after issuance.

What does the Patent Attorney need to prepare the patent case?

1. A completed information disclosure statement with drawings, flow charts, splash screens;

2. A check for the cost to draft and file the application (year one costs);

3. Four weeks to prepare, review with client, and file the case.

Wendy K.B. Buskop is the Managing Patent Attorney for the Buskop Law Group, PC in Houston, Texas. Ms Buskop has worked on numerous patent case including technologies for contractors to NASA and technologies that fly on the Space Shuttle. Negotiated sales of various technologies, from small as $ 1.5 million deals for a heat treating and welding methodology to single projects over $100 million. Ms. Buskop has participated in trials and appeals of complex software and chemical patent infringement cases as well as complex theft of trade secrets for sub sea technology and theft of trade secrets on optimization software. In 2001, she handled database issues, Internet business matters, business methods, medical devices and methods patents, gene sequencing, chemical inventions and publishing issues. Ms. Buskop is a member of the Licensing Executive Society, the American Intellectual Property Law association, the Texas Bar Association, the Michigan State Bar, the Houston Bar Association, and the American Bar Association.