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Fumitomo Hide, Ph.D.
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US Provisional Patent Applications US Non-Provisional Patent Applications Introduction to Japanese Patents How to Search Japanese Patents Items
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I am located in San Jose,
California, and specialize in LCDs (liquid crystal displays),
OLEDs (organic light emitting diodes), semiconductors, electronics, optics, lasers,
and fuel cells. I offer patent consulting and translation (Japanese to English, English to Japanese) services for small businesses, start-up companies, and individual inventors. I assist with patent searches and inventors with preparing US provisional patent applications (PPAs). If you are an individual inventor or an inventor at a small start-up company, you must try to protect your invention while trying to reduce the cost of filing for patents worldwide. Your 1st step should be to consider filing a US provisional patent application (PPA). As soon as you file a PPA, you can refer to your invention as "patent pending". The PPA allows the inventor to establish a filing date (priority date) for the invention without having to prepare and file a non-provisional patent application immediately. If you are a small business (less than 500 employees), your filing fee for a PPA is only $80. There is no need to build and test the invention to file a PPA. However, the PPA must fully disclose how to make and use the invention. I have a chapter on Provisional Patent Applications. After filing the PPA, you have a 12 month pendency period to file a non-provisional patent application that references the PPA and claims the PPA's filing date. If you are an individual or small business inventor, you should use this 12 month pendency period to assess whether filing patent applications in the US and/or other countries makes business sense. You should assess your business case carefully before you start spending a lot of money. Some items you should work on during the pendency period are: market study, technical feasibility, manufacturability, funding, and prior art. Market: Use the 12 month pendency period to assess potential markets for products that would use the invention. Determine, based on current trends, which countries are likely to be significant markets for these products. Because of the high cost of seeking patents, it is essential for you to carefully choose the countries where you will file patent applications. The possibility of an infringement in a particular country does not always justify the expenses of seeking a patent in that country. Technical Feasibility: It is not necessary for you to build and test an invention for filing a PPA. However, you should try to build the invention as soon as possible to assess technical feasibility. A positive or negative result should help you decide whether to file patent applications in the US and other countries. Manufacturability: Assuming that the invention can actually be built, you should also try to assess whether the product using the invention can be produced at costs that the market will support. This study may be difficult to complete in less than 12 months but you should start as soon as possible. For example, you may discover that in order to produce the product at sufficiently low cost, you need a manufacturing partner in a country where you had not expected a significant market for the product. You should take this into account when deciding in which countries you want to file patent applications. Funding: You need to assess your funding situation and raise money. Filing patent applications in the US and other countries costs money. A significant portion of this cost is the cost of patent attorneys and translations into other languages. You can save money by doing as much work as you can on your own patent applications so that the patent attorney does not spend a lot of time on it. I can help you reduce the cost of preparing your patent applications. Prior Art: This is an area that many inventors frequently ignore. Inventors are typically experts in the technical area in which they invented something. Many assume that they invented something for the first time, because they have not seen it in any journal articles and have never heard about it at conferences. However, many inventions are not published at conferences or in journals. If there is a patent for an invention that is identical to yours and you can not obtain a license, what is the business case for continuing with your patent applications? I have chapters on how to search US patents and non-US patents and I can also perform patent searches for you. I also have separate chapters on Japanese patents. If you are working in technology development in semiconductors, electronics, optics, or chemistry, you cannot afford to overlook Japanese patent documents in your prior art search. The following table shows the number of patent documents that were published by the European, US, and Japanese patent offices in 2002. Japan published more patent documents than the US or Europe.
I have chapters on Japanese patents for people who do not read Japanese. One-Year Foreign Filing Rule: The Paris Convention is an international patent treaty that specifies that a patent applicant can file a patent application in any member jurisdiction within 1 year of the applicant's earliest filing date (e.g. the filing date of your PPA). This means that within 1 year of filing your PPA, you must prepare and file non-US (foreign) applications as well as your US non-provisional application. The next chapter is US Provisional Patent Applications. If you have a Japanese patent document and need a translation, contact me and I would be glad to provide an English translation of the abstract for FREE. Contact Information for Fumitomo Hide: Email: fhide@att.net Telephone: +1 408-252-7814 Fax: +1 320-216-6087 1072 S. De Anza Blvd., Suite A107-332, San Jose, CA 95129, USA |
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Updated August 8, 2003.
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