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27th Aug 2014

Q: I developed a very unique invention and figured it just can’t be that difficult to get a patent, but the examiner at the Patent Office is driving me to absolute distraction. Half the time I don’t even understand what he’s saying. Is there some no-cost help I can get?

— N.D., Long Beach

A: Obtaining a patent can, indeed, be quite challenging. Still, America certainly wants to encourage invention. The cost of a patent specialist, however, can also be rather challenging. But there is some good news: A nationwide effort has been underway since the America Invents Act was passed in 2011 to provide pro bono guidance to inventors. In our state it is known as the California Inventor Assistance Program. You can find it at www.calawyersforthearts.org/CIAP.

In addition, the U.S. Patent and Trademark Office has two links to visit:www.uspto.gov/inventors and www.uspto.gov/inventors/iac/index.jsp. Each contains topics and content that should be helpful to you at no charge. Lastly, I close with the following piece of advice: Don’t give up. If you invented it, and it is patentable (see the third question below), stay determined. Patience and perseverance may be essential.

Q: How do I know if what I invented is instead patented by someone else who then sues me?

— D.W., City of Industry

A: The Patent and Trademark Office website has a section pertinent to your inquiry: www.uspto.gov/patents/process/search. The first three topics address how to determine if an invention is patentable, how to conduct a preliminary U.S. patent search and a seven-step strategy for patent searching. If affordable for you, consultation with a patent specialist is recommended. Patent law, after all, is one of the few legal fields in California for which an attorney can obtain certification as a specialist.

Q: What do I have to demonstrate to obtain a patent?

— J.S., Palos Verdes Peninsula

A: The United States has broad standards for what can be patented. It can be processes, articles of manufacture, machines and compositions, as well as improvements of an invention (subject to certain criteria). There are different types of patents: utility, design and plant. The most common is utility. If your invention fits into one of these categories, it is called “statutory subject matter,” which is an initial step to qualifying. The invention also must have some usefulness, even of a trivial nature, must be novel (different from prior inventions in some material way), and must be nonobvious, which means a surprising and significant development.

Ron Sokol is a Manhattan Beach attorney with more than 30 years of experience. His column appears on Wednesdays. Email questions and comments to him at RonSEsq@aol.com or write to him at Ask The Lawyer, Daily Breeze, 21250 Hawthorne Blvd., Suite 170, Torrance, CA 90503. This column is a summary of the law and not a substitute for legal consultation on any particular case.

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