Patents

A patent is a government, time-limited grant to an inventor for the exclusive right to make, use and sell an invention in the United States. The patent statutes generally provide for three types of patents: utility (the most common), design and plant.  With a few exceptions, a United States patent is enforceable for 20 years from the earliest application filing date.  Enforceability begins on a patent’s issue date. Generally, in order to obtain a patent that is enforceable in a foreign country, one must file a separate patent application in that country.

There are generally four types of “things” that are patentable in the United States: processes, machines, manufactures, or composition of matter.  These four categories cover almost all things created by man. Notable exceptions are abstract ideas (mathematical algorithms and mental steps oftentimes embodied in some form of software, and medical treatment processes), human beings, naturally occurring things, and, in some countries, games and software.

Inventions must meet the “four doors to patentability” in order for a patent to be obtained.  The “four doors” are: 1) utility (most inventions meet this easily); 2) novelty – the inventions must not have been done before; 3) non-obviousness to one having ordinary skill in the art to which the subject matter pertains at the time of the invention; and 4) adequacy of disclosure to the public.

A United States patent is obtained from the United States Patent and Trademark Office (USPTO) in Washington, D.C.  Initially, a patent application is filed at the USPTO.  At this point, the invention is “patent pending.”  A Patent Examiner reviews the application and searches the prior art (i.e., pre-existing patents, pending applications, articles, etc.) to determine whether the disclosed invention meets the “four doors of patentability.”  Frequently, the Patent Examiner will find prior art that he/she believes makes the invention non-patentable.  The applicant is then given at least one opportunity to amend the application and/or argue against the Patent Examiner’s findings.

A patent is the only way that one’s “ideas” that are going to be publicly known can be protected.

A patent allows you to prevent others from making, using, selling, importing your processes, manufactures, etc.

A patent or pending patent application provides you with limited protection when marketing your invention to others by providing public notice of your rights, or anticipated rights, to exclude others from making, using or selling the invention.

A patent provides you with protection against competitors that could otherwise “reverse-engineer” your product to produce a substantially duplicate product.

The United States is a first-to-file country, meaning filing a patent application prior to disclosing the invention is typically necessary to prevent loss of rights. In the United States, a patent cannot be obtained on an invention that has been patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention, or described in a patent or patent application published before the effective filing date of the claimed invention that names another inventor. Disclosures by an inventor(s) or someone that obtained the information from an inventor may provide a one year grace period in which to file, but generally should not be relied on.

Most foreign countries have similar “strict novelty” requirements, meaning that the invention cannot have been publicly disclosed, on sale or sold anywhere prior to filing a patent application. Hence, disclosure of the invention prior to filing a patent application in the United States can result in the loss of foreign patent rights in many countries.

In most foreign countries, once a United States patent application has been filed, a foreign application must be filed within one year for the inventor to be granted the same “priority” filing date of his/her United States patent application.

In the United States, an inventor can file a provisional application, which reserves a filing date for the purposes of determining patentability, but which is not examined for obtaining a patent.  The provisional application remains pending for one year from the filing date.  During this year, a utility patent application must be filed if it is to claim the benefit of the provisional application filing date.

The provisional application provides several advantages, which may be desirable because: (1) it gives an earlier filing date without impacting the patent term of a possible patent; (2) the invention is “patent pending” while the provisional application remains pending; (3) it has a lower filing fee, and can be less formal than a utility patent application; and (4) it is not published, meaning you can maintain the “trade secret” status of an invention.

Some disadvantages to filing a provisional application are: (1) another patent application must be filed in order to obtain a patent; (2) it is not examined for patentability, and does not get the invention any closer to being examined; (3) a design patent application cannot claim the benefit of the filing date; and (4) the benefit of a provisional application with respect to foreign rights remains an open issue.

A provisional application is often used to meet a bar date for filing a patent application, to delay the prosecution of an invention (e.g., to market and/or develop the invention, postpone patent rights for anticipated higher royalties in the future, etc.), to obtain patent-pending status while the utility application is drafted and/or a search is performed, etc.

While strongly recommended, a patentability search is NOT required before preparing and filing a utility patent application. The patentability search aids in determining what is “prior art”, or in other words, what is already known. The patentability search also helps in preparing the application since the invention can be compared and distinguished from similar inventions. Additionally, the search results can assist an inventor in determining whether it is desirable to incur the costs of obtaining the patent application.

If a search is requested, a brief description of the invention is prepared and provided to a professional searcher. The searcher will perform a search of current patent records at the USPTO and provide a report revealing any patents or published applications that are considered similar to the invention.  An opinion can then be prepared giving an indication of the likelihood that an invention is patentable.

Patent searching is not an exact science. It is important to recognize that with over eight million patents issued and tens of thousands of published applications, there is always the possibility that one or more patents or published applications that are pertinent may not be found when the search is performed. Additionally, the searcher exercises a great deal of subjectivity in performing the search, and there are inherent limitations in any search system.  Furthermore, because of the extremely high number of unpublished patent applications currently pending within the USPTO, there is also a possibility that an unpublished application covering the concepts behind an invention may already be filed.  Therefore, while a patentability search is advantageous, there is no guarantee that every pertinent reference will be located by one of these searches.

A patent attorney or agent reviews an invention disclosure, reviews any prior art, discusses the invention with the inventor(s), and prepares the following: a patent application including a specification, claims and drawings; a power of attorney; a declaration of inventorship; and an information disclosure statement (if necessary).

Inventors should identify any bar dates for their inventions to their patent attorneys at any initial meeting. A “bar date” is not a meeting at your favorite watering hole. In patent terms, it is a date after which you cannot file for a patent. In the US, activities such as patenting, description in a printed publication, public use, sales, being on sale, or other public availability can kill patent rights. There is a limited one year grace period for such activities if the disclosure was by one of the inventors or one who obtained the information from one of the inventors. Always disclose such activities to your patent attorney so that a patent application can be filed well in advance of any bar date.

For some types of inventions, a design patent application may be desirable.  A design patent application seeks patent protection for the ornamental appearance of an article (e.g., its shape and/or surface ornamentation applied to the article).  If a design patent application is desired, it is strongly recommended to use a draftsperson that is familiar with all of the USPTO requirements in submitting the drawings of the design.

In the US, the inventor owns the patent rights unless those rights are assigned to another entity.  An assignment of patent rights from an inventor to another entity, e.g., a company, must be recorded at the USPTO. 

In order to obtain patent protection in any given nation, one must file a patent application and receive a patent in that nation.  As a result, should patent protection in one or more foreign nations be desired, generally speaking, an additional application will be required for each nation.

If foreign patent protection is desired, that information should be communicated as soon as possible along with a list any nation(s) in which protection is desired.  The requirements of many nation(s) differ from those of the U.S.; as a result, an earlier filing date may be required if protection in particular nation(s) is desired.

In general, there are two options for pursuing foreign patent protection.  One can either: (1) file an application through the Patent Cooperation Treaty (PCT) and subsequently file a patent application in one or more desired nations/regions; or (2) file a patent application directly in a desired nation/region.

1. Patent Cooperation Treaty

Over one hundred nations belong to the PCT.  By filing a “PCT Request,” one can generally delay filing a national application in these nations by approximately two and a half years (30 months) from the earliest priority date (e.g., the filing date of a provisional application or the filing date of U.S. utility patent application, whichever is earlier).  The PCT process only delays the national/regional process described below, it does not replace that process.

Please keep in mind that the PCT Application only preserves patent rights in the nations that are signatories to the Treaty.  As a result, a national/regional application will still be required for these nations.  Additionally, some nations, such as Taiwan and Argentina, are not signatories to the Treaty.  For those nation(s), or any nation for which use the PCT process is not desired, a patent application may need to be filed before the one-year anniversary of the earliest filing date (usually US) in order to obtain a patent.

2. National/Regional Applications

In addition to the PCT, many nations belong to smaller, regional treaties that provide examination on a regional basis.  For example, many European nations belong to the European Patent Office.  These regional treaties enable prosecution of the application to occur once for all of the signatory nations.

After filing, the next stage of patent procurement in any nation is “prosecution”, which means negotiation with the relevant Patent Office to allow a patent to issue.  It is important to recognize relative to this stage that almost all utility patent applications are initially rejected in a letter from a patent office called an “office action,” which requires a response.

For prosecution of a US application, when an office action is received, a copy is forwarded for review.  The letter also identifies the date by which a response must be filed.  Subsequently, options for proceeding and the relative costs for each option are discussed.  In some applications, more than two office actions are issued by the USPTO.  Further, in certain cases, other actions will be required such as: restriction requirements, examiner’s interviews, affidavits, interference proceedings, pre-appeal brief conferences, appeals, petitions, etc.

An average prosecution period runs approximately two to five years, depending on the area of the invention.

The next stage of patent procurement is the allowance and issuance of the patent.  When a patent is allowed by the Patent Office, payment of an issue fee and a publication fee (if applicable) is required for the patent to issue.  Additionally, the application should be reviewed carefully to determine whether any continuation application(s) may be desired.  A “continuation application” covers subject matter that was disclosed in the original application, but was either not covered by the claims of the original application or was removed for some reason such as a restriction requirement.

Once a utility patent is issued, it is subject to U.S. government maintenance fees at 3.5, 7.5, and 11.5 years after the issue date in order to keep the patent in force for its full term.