PATENT PRIMER

A patent is essentially a social contract with a governmental agency that grants a property right in the form of a time-limited monopoly right to exclude others from making, using, selling, offering for sale, or importing the patented concept or invention in or into the country.

Term: A granted patent for a utility application generally confers the right to exclude others for Twenty (20) years from the date on which the application was first filed or up to 21 years from the priority date if based on a provisional application. For example, a non-provisional utility application based on a provisional application will generally have a term of up to 21 years from the provisional application filing date. Further note that a Design Patent has a shorter Term of only Fifteen (15) years from the grant date of the Design Patent.

Patent Agent or Patent Attorney: Competent representation can make the difference between ending up with a paperweight or an extremely valuable asset. Although the USPTO allows inventors to file their own applications (pro se), preparation or prosecution of applications often times requires subtle knowledge of not only the patent laws and administrative procedures at the USPTO, but of the technology you may be seeking to protect.   A competent patent attorney or agent will be able to draft and file an application that tries to seek sufficiently broad enough protection for your concept(s) in view of the existing art.

Novelty Searches: To avoid wasting significant time and money, at least a preliminary Novelty search should be done before deciding to pursue a patent. A more thorough Patentability search can be done to discover related “prior art”. “Prior art” means all references and publications, published patents and patent applications, articles of manufacture, or other public information that may relate to the patentability of the invention. The search results may provide a basis for predicting the scope and breath of claims that might be obtained for the claimed invention. No matter how much searching is done, realize that the prediction cannot account for the pending applications that remain unpublished at the USPTO before the filing of your application. There is at least an 18-month window where pending applications remain unpublished at the USPTO. These pending unpublished applications can be used as prior art in determining the patentability of your claimed invention.

Provisional v. Non-Provisional Applications: Provisional applications typically cost less to prepare and have lower government fees, but may cost you more in the end if your goal is to obtain valuable patent rights. A provisional application is not examined and must be followed by a non-provisional application within 12 months of the filing of the provisional application to maintain the potential for rights to your invention. A non-provisional application is examined and ultimately results in rights if the non-provisional application is granted. A provisional application is typically recommended if you are in a rush to disclose or if you are trying to place a stake down on a concept while trying to determine if the concept is truly marketable and worth the additional cost of a non-provisional application. A non-provisional application is typically preferred under many circumstances.. Note that the provisional application is only available for utility applications and not design applications.

Patentability: The requirements for obtaining a patent are many, but the two primary requirements are Novelty and Non-obviousness. Additionally, a further requirement dictates that the invention fall within a statutorily defined class of subject matter that can include a “process, machine, manufacture, or composition of matter.” Although seemingly limited, the list of subject matter has over the years been expanded through court-made law to encompass almost anything in the world made by the hand of man, including living organisms and most computer software programs. Only relatively recently, has the expansion of what is considered patentable subject matter been reigned-in a little. In addition to the novelty and non-obviousness requirements, the applicant has a duty to correctly list the inventors, provide an “enabling” disclosure of the invention, and disclose to known material prior art that may affect the patentability of the invention. You jeopardize the validity or enforceability of your patent if you fail to meet these requirements.

Novelty generally signifies that the invention you’re attempting to protect does not exist or is not otherwise publicly known. In other words, there is nothing exactly like it. Note that the inventor themselves can publicly disclose or offer for sale their inventive concept up to one year before they file their patent application in the United States. However, any prior public disclosure may preclude obtaining protection in most countries outside the United States since such foreign jurisdictions have an Absolute Novelty requirement. Therefore, make certain that if you want to obtain protection outside the United States, that you either file your application in your country of residence first (to obtain your Priority Date) or make sure the disclosure of your invention is provided to third parties under written confidentiality agreements.

Non-obviousness generally means that your invention would not be obvious to a person of ordinary skill in the art having the presumed knowledge of the technology area of the invention. This is a very subjective standard that causes many of the rejections at the USPTO since many of the Examiners freely use their discretion to combine references in attempts to obviate claimed inventions.

After the filing of your application, you can expect Publication of your application, substantive examination or “Patent Prosecution”, Issuance or Grant, and Maintenance. Optionally, you may consider Foreign Filing your application. Publication of your application (typically unexamined) occurs around 18 months from the priority date of your application unless the Applicant specifically requests non-publication and is willing to forego foreign filing rights. The Prosecution stage of your application may take 3 months to even over a decade depending on the issues encountered and time for appeals. Typically, a first office action where your application is substantively examined occurs between 18 to 36 months. The USPTO does provide for options to speed up the process including “Track One” and Petitions to “Make Special”, but those are circumstances you should discuss in further detail with your attorney to avoid undue costs or administrative errors.

The Applicant typically has one or more opportunities to respond to the office action(s). If an Allowance is not obtained, the Applicant typically receives a Final Rejection and the applicant has the option to appeal to the Board of Patent Appeals and Interferences or to file a Request for Continued Examination (RCE) application with amended claims. If an appeal is lost, the applicant can further have the matter reviewed in a court of law. If the application is allowed and the applicant pays the Issue Fee, the invention is protected for 20 years from the file date assuming all the required maintenance fees are paid throughout the life of the patent term. Progressively higher maintenance fees are due at four, eight and twelve years after the grant date. Maintenance fees must be paid in a timely fashion to maintain the enforceability of the patent.

Foreign Filing – U.S. patents are only effective and enforceable within the US and its possessions and territories. Protection in other countries typically requires separate filings in each country, involves the hiring of foreign patent professionals or foreign associates, and typically very expensive. There is no one-stop shopping for all countries, but there are mechanisms to ease, postpone or avoid the pain. The most commonly used and recommended mechanism is the Patent Cooperation Treaty (PCT) which enables the US Applicant to file a PCT Application based on their US filing. One of the primary benefits of the PCT Application is that it allows the Applicant to delay their foreign filing decisions out to (typically) 30 months from the Priority Date. This gives the Applicant some additional time to assess the business case whether to pursue the foreign application rights without incurring the specific country foreign filing costs. By 30 months, the Applicant can possibly determine if the invention is patentable or likely patentable in the US, whether the concept is marketable, and whether infringers or manufacturers are likely to emerge from the particular foreign jurisdictions of interest. Most significant economic countries are members of the PCT and therefore the PCT is a reasonable approach for most foreign filing needs. Note that the PCT application itself does not mature into a patent, but only serves as the basis for national filings.