U.S. Patent Overview

Overview Of Intellectual Property

Protecting the product of one's mental labor can be in the form of patents, trademarks, copyrights, and trade secrets. In general, patents protect inventions of tangible things such as a machine, process, chemical formula; copyrights protect various forms of written and artistic expressions such as a song, book, play; and trademarks protect a name or symbol that identifies the source of goods or services.

What Is A Patent?

A patent is an official document granted by the federal government conveying to the owner (inventor, assigns or heirs) the rights to exclude others from making, using, offering for sale, selling the invention in the United States or importing the invention into the United States, its territories and possessions. Patents do not allow the applicant the right to make, use, sell or offer to sell the patented invention. The three different types of patents available are utility, design, or plant patents. A utility patent protects a new, useful and nonobvious embodiment of an idea, such as a machine, a process, a chemical, computer software and even a living organism. A plant patent protects a new and distinct variety of plants, including newly found seedlings. A design patent protects any new, original and ornamental shape of a useful article.

What Is Patentable?

Any person who invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent, subject to certain restrictions. That is, if the invention has been described in a printed publication by others anywhere in the world, or known or used by others in the United States before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in the United States by the applicant, more than one year before the date on which applicant files the patent application with the United States Patent and Trademark Office (US PTO), a patent cannot be obtained.

In this connection, it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. It is important to note that even if the subject matter sought to be patented is not exactly shown by the prior art, but involves one or more differences over a similar thing already known, a patent may still be refused if the differences could be considered obvious to one skilled in the area of technology sought to be protected.

The subject matter sought to be patented must be sufficiently different from what has been used or described before so that it may be said to be nonobvious to that person having ordinary skill in that area of technology. For example, if a patent exists on a chair assembled with nails, you could not obtain a patent on a chair assembled with screws, as substituting one material for another or changing the sizing is ordinarily not patentable.

What Is NOT Patentable?

Inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons, the laws of nature, physical phenomena and abstract ideas are not patentable subject matter. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc. and not upon the idea or suggestion of the new machine.

Is A Patentability Search Recommended?

Depending on the circumstances, most often a patentability search is recommended to determine what prior art exists and if any infringement problem exists if the product is made, used or sold.

Who May Apply For A Patent?

Patents must be applied for in the name of all the individuals who invented the subject matter sought to be patented. If the inventor is deceased, the application for patent may be made by the administrator or executor of the estate. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply for the patent on behalf of the non-signing inventor.

How Does One Apply For A Patent?

The inventors, often with the assistance of a patent counsel, file either a non-provisional patent application or a provisional application with the US PTO, which applications are maintained in the strictest confidence until the patent issues. For a non-provisional application to be accorded a filing date by the US PTO on the date it was mailed, the application must include a written detailed specification (background of the invention, summary of the invention, detailed description of the drawings, abstract and claims), the names of the inventors, and a drawing if necessary. Later, a sworn oath and declaration and government filing fee must be filed with the US PTO.

All papers must be in English or accompanied by a verified translation into English. As of June 8, 1995, a provisional application may be filed at a lower first filing cost. Claims and an oath or declaration are NOT required. A provisional application provides a means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. However, provisional applications are not available for design patent applications. Applicants then have twelve months to file a non-provisional application, while benefitting from the earlier filing date of the provisional application. Provisional applications are not examined on the merits.

How Is The Application Examined?

The applications are assigned to examining groups according to the technology of the invention. The examining attorney usually mails an "action" to the attorney of record stating the reasons for objecting to or rejecting the application and forwards any prior art uncovered. It is not uncommon to have some or all the claims rejected on the first office action by the examiner, as relatively few are allowed as filed. The attorney then prepares a response and specifically points out the examiner's errors and often amends the claims to overcome the prior art or to clearly define the invention. In many cases, personal or telephonic interviews are conducted with the examiner to assist him/her in understanding the point of novelty of the invention.

How Long Does It Take To Obtain A Patent?

Depending on the US PTO caseload, the time period from filing the application until issuance of a patent can take at least 18-24 months. Applications can be advanced out of turn for special circumstances, such as age of inventor, infringement of the subject matter, etc.

How Often Are Patents Granted?

According to the US PTO statistics, patents are granted in the case of about two out of every three patent applications filed. See attached charts.

Are Patents Assignable Or Transferrable?

A patent is personal property that can be assigned, licensed, sold, mortgaged or bequeathed by will, and passed to heirs. A patent application may also be sold or transferred by a written instrument. The patent or application may also be assigned in half interests, fourth interests, etc. to a third party. Such conveyance should be recorded with the US PTO three months after the date of conveyance or it becomes void against subsequent purchasers as improper notice.

How Is A Utility Patent Maintained?

During the term of an utility patent, maintenance fees must be paid every 3 =, 7=, and 11= years after the grant date of the original patent to maintain the patent in force. A six-month grace period is provided with payment of a surcharge.

When Does A Patent Expire?

Utility patents last twenty (20) years from the date of the filing of the earliest patent application subject to the payment of maintenance fees. Likewise, plant patents last twenty (20) years from the date of the filing of the earliest patent application, while design patents last 14 years from the date of issuance.

What Happens When A Patent Expires?

After the patent expires, anyone may make, use, offer for sale, sell or import the invention without permission of the patent owner, provided that subject matter is not covered by an unexpired patent. Certain pharmaceutical patents may be extended as provided by law.

When Does One Infringe a Patent?

One infringes a patent by the unauthorized making, selling, using, offering for sale, selling any patented invention within or importing into the United States any patented invention during the patent term. Infringement is determined by the language of the claims, that is the accused device must fall within the elements of at least one claim, or must function in substantially the same way, in substantially the same manner to obtain substantially the same result as the patented technology to be liable for infringement under the doctrine of equivalents. Statutory damages, lost profits or a reasonable royalty and an injunction can be sought in federal court.

How Do I Obtain International Patent Protection?

Most foreign countries are absolute novelty countries, which means that the one-year grace period in the United States as described above does not apply. A U.S. inventor desirous of obtaining foreign patents must first file an application in the U.S. before any disclosure to the public, whether in written or oral form, is made of the invention. The U.S. inventor has 12 months from the filing date of the U.S. application to foreign file and claim priority to the U.S. filing date. Often, a Patent Corporation Treaty (PCT) application is filed within twelve (12) months from the U.S. filing date. A PCT application is not available for design patents, and any foreign design patent applications must be filed 6 months after the U.S filing date to claim priority to that earlier date.

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