Patents

To be patentable an invention must be a new, non obvious, and useful process, machine, article of manufacture, composition of matter, or an improvement to any of the foregoing. In addition to utility patents for any of the foregoing categories of inventions, patent protection is also available for the ornamental design of an article of manufacture and to asexually reproduced plant varieties.

Laws of nature, physical phenomena, abstract ideas, literary works, and inventions that are either not new or useful are not patentable. Literary works such as dramatic, musical, and artistic works can be copyright protected. Inventions that are offensive to public morality are also not patentable. An invention is only patentable if it is none of the foregoing, new, nonobvious, adequately described or otherwise enabled in a patent application, and claimed by the inventor in a patent application in clear and definite terms.

A patent search is a search of the prior art, namely, that which is known and already invented. The determination of whether to file a patent application often depends on the outcome of a patent search. A patent search is usually important because it can not only save an applicant the expense of filing a patent application on subject matter already patented or within the public domain, but also afford an applicant an opportunity to invent over the subject matter discovered from the search. A patent search can also make an applicant aware of potential infringement issues.

A patent search is a search of all previous public disclosures (prior art) including, but not limited to, previously published disclosures and patented inventions anywhere throughout the world. Although a patent search of the prior art before filing an application for patent is not required, it is advisable to do so. A registered patent attorney or agent is a useful resource for performance of a patentability search. An applicant should recognize that the Patent Office will conduct a search as part of the official examination process.

No. However, perhaps the most important issue for an inventor when deciding whether to invest in pursuing a patent is whether the invention is capable of being patented. A thorough patent search can often answer this question by providing insight into whether the invention sought to be patented is an advancement over the prior art, namely, that which is already known or patented. There are no drawbacks with a patent search, and it is usually a prudent first step to take in the pursuit of a patent.

To secure a patent for an invention, a patent application disclosing and claiming the invention must be filed with and processed through the United States Patent and Trademark Office. A patent application is a formal request to the U.S. government for the patent grant. For each patent application we prepare, we offer to include the inventors throughout the process. By working closely with inventors, whether in person, over the phone or by email, we try to make the patent process understandable, interesting, and fun.

A provisional application is a preliminary application that permits an applicant to secure an early filing date to preserve rights to an invention. The provisional application includes a specification describing the invention, any necessary drawings and the filing fee.

A provisional application is accorded a filing date when a specification and drawings (if needed) disclosing an invention are received by the United States Patent and Trademark Office. The provisional application automatically abandons 12 months from its filing date and is not examined by the Patent Office. A non-provisional patent application claiming priority to the earlier-filed provisional patent application must be filed no later than one year from the filing date of the earlier-filed provisional patent application. A provisional filing date does not trigger the 20-year patent term in the United States. Also, the filing of a provisional application is useful for avoiding a statutory bar if it is filed before a public disclosure, offer for sale, or sale of the invention.

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A non-provisional patent application claiming priority to the earlier-filed provisional patent application must be filed no later than one year from the filing date of the earlier-filed provisional patent application. If not, all the benefit of the earlier-filed provisional patent application is lost. Therefore, the first action is to document the one-year anniversary date from the filing date of the provisional patent application. Use the intervening time between the filing of a provisional patent application and the filing of a nonprovisional patent application as judiciously as possible to investigate the commercial potential of your invention.

For a commercially successful product, invention is usually made at three times. The first time is “off the drawing board” or when the invention is first conceived. A provisional patent application can be filed at this time. The priority date is established in the records of the United States Patent and Trademark Office and all products, literature, and documents, including engineering drawings, should be marked “Patent Pending” or “Pat. Pend.” Before a provisional utility patent application is filed, it is strongly recommended that you seek the counsel of a registered patent practitioner.

Further invention is often made during the research and development stage as the inventor experiments, tests and perfects the invention. Good records should be kept of the modifications to the invention and to alternate embodiments of the invention, which must be presented to the patent practitioner for inclusion into the nonprovisional patent application.

After the inventive product is on the market, customer feedback is received. It is very probable that the inventor may make further changes at this time to enhance the marketability of the product. Again, records should be kept and the modifications presented to the patent practitioner well before the first anniversary of the public disclosure. These additional modifications can be protected with the filing of a patent application, whether a provisional patent application or a nonprovisional patent application.

The United States government grants patents for inventions that are novel in view of what is known. The determination of whether an invention is novel takes place during the prosecution or examination of the patent application that discloses the invention. Patent prosecution is the interaction between applicants and their representatives, and the Patent Office with regard to an application for patent. After a patent application is filed, the United States Patent and Trademark Office assigns it to an Examiner with technical training in the technology of the invention. This marks the start of the examination of the patent. To examine the patent, the Examiner reviews the patent application and searches the subject matter of the application to locate prior art including relevant patents and printed publications. After reviewing the prior art and the patent application, the Examiner determines whether the invention is patentable. We receive communications from the Patent Office that set forth the Examiner’s findings concerning the patentability of the invention and other informal matters concerning the patent application. We respond to these communications, which involves clarifying the invention to the Examiner and advocating the patentability of the applicant’s invention over the prior art. If the prosecution of the patent application is successful, the patent is allowed and eventually matures into an issued patent after payment of an issue fee to the government.

There is no way to control how an Examiner examines a patent case and assesses the prior art. At Parsons & Goltry, we have complete control over our role prosecuting patent cases, which is to show the Examiner why an invention is different from the prior art. Furthermore, our job is to get each inventor the best and most comprehensive patent protection possible. To do this almost always results in an initial rejection of the claims of a patent application. However, this is almost always no cause for alarm and is just the first step toward the issuance of a well-constructed patent.

After it is shown to the United States Patent and Trademark Office that a proposed invention is novel over the prior art, the Patent Office will allow the patent application disclosing and claiming the invention. At this point, an issue fee must be paid to the Patent Office for the patent application to mature into a patent. An applicant for patent should recognize that patent maintenance fees are required after a patent issues. Three patent maintenance fees are due at 3.5, 7.5 and 11.5 years from the date of issue of the original patent. Maintenance fees do not apply to design patents.

The filing date of an originally filed United States patent application may be accorded to any subsequent foreign patent application filed within one year of the original United States filing date (six months for a design application). As a general rule, if there is a disclosure of an invention by publication or use in the United States, or anywhere else in the world, before the filing date of the United States application or before the priority date of an application filed elsewhere, with the exception of the United States and selected other countries, the filing of patent applications in most countries throughout the world is barred. However, there are a number of major country exceptions that allow patent protection to be obtained notwithstanding a prior disclosure of the invention. These exceptions normally arise out of distinctions made between, for example, an inventor’s actions, actions of others, actual use or publication of the invention and at official exhibitions.

The one-year time period may be extended by a period of up to eighteen (18) months by first filing a utility application with the Patent Cooperation Treaty (PCT) Office within one year of the original United States filing date. A PCT patent application must eventually be converted to a national patent application for any country in which client may wish to seek patent rights.

Like a United States case, an applicant can expect filing fees and patent prosecution fees for any foreign country where the applicant wishes to seek patent rights in addition to a fee at the time any patent may grant. However, unlike a United States case, many foreign countries begin charging annuity fees (maintenance fees) long before the issuance of the patent.

A patent is necessary in order to prevent others from making, using, selling, offering for sale, and importing your invention into the United States. Without a patent, anyone can make, use, and sell your invention without your permission, and without paying you any money.

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