Patents protect inventions.
- What is a patent?
A patent is a time-limited right granted by the government in exchange for an enabling disclosure of an invention. By issuing patents, the government balances two competing goals – giving adequate economic incentives to pioneering inventors to invent while making sure that the public as a whole can make effective use of and build upon the inventions.
- What do patents protect?
In the U.S., there are three types of patents that protect different types of inventions. They are:
- Utility Patents, which are granted to anyone who invents or discovers new and non-obvious ideas, that may be categorized as follows:
a. Process – the steps performed on a work piece (this also generally includes software);
b. Machine – A complex apparatus with cooperating parts;
c. Article of Manufacture – Simple object of apparatus;
d. Composition of Matter – chemicals, materials, biological matter, etc.; and
e. Improvements – on any of the categories above.
- Design Patents which are granted to anyone who invents a new, original, ornamental design for an article of manufacture.
- Plant Patents which cover asexually reproducible plants.
- What does a patent do?
Under the U.S. Constitution, the government grants a patent’s owner the right to exclude others from making, using, selling, or offering to sell their patented invention for a limited period of time. As an exclusionary grant, a patent does not provide the right to practice anything. A patent is like a hunting license. It is only useful to go after whoever is violating the patent, infringers.
- Who can get a patent?
Inventors and entities can apply for a patent. When those inventors work for a company or the government, the employer often requires its employees to assign the patent rights to the company in exchange for their wages and benefits.
- How long does it take to get a patent?
It depends on the type of invention. A typical rule of thumb is 18 months to three years. The U.S. Patent Office does offer a “fast-track” option that moves your patent application to the front of the line for expedited examination.
- How long does a patent last?
An issued utility patent lasts 20 years from the date of filing, so long as maintenance fees are paid. A design patent lasts 14 years from the date of issue.
- Where can I use my patent?
Patents are only valid in the country that granted the patent. This means a United States patent is only valid in the United States. Your patent attorney can help you decide when and how to file for patent protection in other countries.
The Patent Process:
How do I get a patent?
The Chronology of an Invention
- Idea or Concept
- Invention Disclosure to your employer (if appropriate)
- Patent Search
- Provisional Patent Application (if appropriate)
- S. Patent Application (if appropriate)
- Foreign Patent Applications (if appropriate)
- Patent Office Examinations (a.k.a. Prosecution)
- Patent Publication
- Issued Patent (if patentable)
- Post-Patent Proceedings
- Expired or Abandoned Patents
You invented something that may be patentable. Here is what happens next.
B. Invention Disclosure
If you work for a business, an education or research institution, the government, or other employer, your employer probably has rules governing how intellectual property is handled within the institution. The first step after discovery is typically disclosing the invention using the proper forms or process to the proper authority within the company so they can determine whether or not to pursue patent protection for your invention. We recommend that you familiarize yourself with your employer’s intellectual property policies.
C. Patent Search
Prior to filing a patent application, we highly recommend that you conduct a patent search to look for prior art that can prevent your patent application from issuing. The websites www.uspto.gov and www.google.com/patents have patent search engines. Becoming familiar with the state of the technology and seeing what technology is already patent protected allows you to make informed decisions.
What are the requirements for patentability?
Two important criteria are novelty and non-obviousness.
An invention is not considered to be new if it was:
- known or used by others in the U.S. before the invention by applicant;
- described in a printed publication or patented anywhere in the world before the invention by applicant;
- patented anywhere before the date of application;
- described in a printed publication anywhere in the world before the date of application;
- in public use anywhere in the world before the date of application;
- on sale in the U.S. before the date of application;
- abandoned or the applicant was not the first inventor or the applicant was not the inventor.
In the U.S., an applicant is granted a one-year grace period for any disclosures made by the applicant. Foreign countries however require a patent application be filed prior to the public disclosure of your invention. This is known as “absolute novelty.” If you think you may need patent protection outside of the U.S., be very careful about making your product publicly available or disclosing your invention to the public. Please see the “Foreign Patent Applications” below for more details.
How do I know if my invention is new and non-obvious?
Prior art is used to determine whether or not an invention is new and non-obvious. Prior art includes technology known, used or published any where in the world before the date of application. With limited exceptions, any publication, public use or on-sale activity before the filing date of the patent application is a statutory bar to patentability.
If you are ready to start the process of obtaining a U.S. patent, you have two application options: the provisional patent application and the non-provisional application.
D. Provisional Patent Application
A provisional patent application may be filed for purposes of establishing an early filing date.
- Provisional patent applications never actually become patents and are not examined by the USPTO.
- They allow the applicant to claim priority to the provisional application for one year.
- Typically they are used only when time is of the essence or when an invention has marginal value at the time of filing.
- It is very important that the disclosure included in the provisional application is detailed and covers the entire invention so that it supports the claims in the future non-provisional application.
- A non-provisional patent application must be filed within one year of the provisional application’s filing date.
E. Non-Provisional U.S. Patent Application
You do not have to file a provisional patent application prior to filing a non-provisional application. A non-provisional patent application can only be filed by the actual inventors or an attorney or agent registered to practice at the USPTO. Non-provisional applications are also commonly referred to as utility patent applications.
Non-Provisional patent applications filed in the U.S. Patent and Trademark Office (USPTO) include the following sections:
- Drawings of the invention;
- Written Specification describing the invention;
- Claims, which define the metes and bounds of the patent;
- Declaration signed by all inventors; and
Once filed, the applicant cannot add new matter later. Thus, the completeness of a non-provisional patent application is critical. Additionally, the applicant is under a duty of good faith and candor. In order to meet this obligation, one must provide any relevant prior art to the USPTO.
Patent applications can include one invention only. Multiple inventions require multiple patent applications. If you include more than one invention in your patent application, the Examiner will require that you separate the multiple inventions during prosecution. This is called Restriction and Divisional practice.
If during the prosecution of a patent application, you improve the invention, you can file a Continuation-In-Part application to cover the improvement.
F. Foreign Patent Applications
Patents are only valid in the country that granted the patent. That means a United States patent will not protect your invention from infringing activity in Germany, China, Mexico, or any other country. If your invention will be made or sold outside of the United States, you should speak with your patent attorney about filing for patent protection in other countries.
Generally, foreign applications must be filed within one year of filing the first US patent application.
Unlike the United States, most foreign countries require “Absolute Novelty” of an Invention. This means that a patent application must be on file somewhere before the product is publicly available or the invention is disclosed to the public. While the U.S. offers a grace period for disclosures made by the applicant, most countries do not have such a grace period.
Various treaties such as Paris Convention and Patent Cooperation Treaty (PCT) are useful in seeking foreign patent rights.
Under Paris Convention, an applicant or owner of an invention has 12 months from the filing date of the first application to file corresponding foreign patents, while maintaining the original priority date.
Under PCT, one patent application can be filed that provides the Applicant rights to seek foreign patent protection in many countries for at least 30 months after the original patent filing.
Application examination process and claiming practices are often very different in many foreign countries.
Patent costs are often very different and usually require annual annuities to keep the patent application and subsequent patent active.
Most foreign countries require translations and the use of foreign patent associates to prosecute the application.
G. Patent Publication
Patent applications will generally be published at about 18 months from filing. Under certain circumstances, patent damages may be collected from the date of the publication of the patent.
H. U.S. Patent Examination
The examination process works as follows:
- A Patent Examiner searches USPTO records for prior patents similar to the application.
- Depending on the search results, the examiner issues an Office Action, a document that typically rejects the patent’s claims in whole or in part by showing prior art.
- The applicant responds to Office Action by amending patent claims and/or presenting arguments for allowance. During prosecution, every Office Action is subject to very stringent deadlines. Failure to meet the imposed deadlines will cost extra money and may result in the abandonment of the patent application.
- Once an agreement is reached with the examiner, the patent application is allowed and issues as a patent.
- If the examiner and the applicant cannot come to a mutual understanding or agreement of a patentable invention, the examiner will issue a Final Rejection. The applicant can continue prosecution by filing continuation applications or can appeal the examiner’s decision.
Depending on the type of invention, the process usually takes anywhere from 1.5 to 3 years.
I. Issued Patent (if patentable)
Once issued, a patent is presumed valid. Subsequent invalidation of an issued patent can be pursued in the USPTO and/or in federal court.
J. Post-Patent Proceedings
- Reissue Application: Whenever a patent is inoperative or invalid by reason of a defective specification or drawing, or by reason of claiming more or less than the patentee was entitled to claim, the applicant may seek to re-issue the patent correcting the error by filing what is known as a reissue application.
- Broadening Reissue Application: For a period of two years after a U.S. patent is granted, the applicant may seek to broaden the claims in the issued U.S. patent.
- Reexamination Application: Any person, at any time may seek to have a patent re-examined by the USPTO if a substantial new question of patentability of the claimed invention arises.
K. Expired or Abandoned Patents
The USPTO requires that utility patent owners pay periodic maintenance fees at the 3.5, 7.5, and 11.5-year anniversaries of the date the patent was granted. If the fees are not paid, the patent will expire. No maintenance fees are required for design and plant patents.
Maintenance fees can be paid starting six months prior to the due date. If the payment isn’t made on or before the due date, a six-month grace period begins during which time the patent owner can pay the maintenance fee along with a small penalty.
If the patent expires due to non-payment, it can be revived up to two years after the end of the grace period by a petition showing that the non-payment was unintentional, or at any time if the non-payment was unavoidable.
A few Important Things to Know about Patents
- Patent Attorneys: Patents can be filed and prosecuted either by the inventor or by a registered patent attorney or patent agent only.
- First-to-File: The U.S., operates under a “First-to-File” patent system where only the first applicant of an invention is entitled to a patent for that invention. Why is this important? If two inventors apply for patents covering the same invention, the patent will be issued to the first inventor to file the patent application. The lesson: File early.
- Patent Marking: Products covered by U.S. patents should be marked with the appropriate patent numbers in order to maximize the amount of damages a patent owner can collect from a patent infringer. Placing the patent number(s) on your goods provides constructive notice that your product is patent protected.
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