A patent is a limited grant of a property right to the inventor(s) for the subject matter claimed and is issued by the United States Patent and Trademark Office (PTO). U.S. patent grants are effective only within areas subject to the jurisdiction of the United States. Generally, the term of a new patent is 20 years from the date on which the non-provisional application for the patent was first filed in the United States or, in special cases, from the date an earlier related application was filed, and the patent is subject to the payment of maintenance fees.
A patent is a negative right. This means that the patent owner can exclude others from practicing the invention. It does NOT give the patent owner the right to practice the invention. That is, even if the patent owner is practicing the patented invention, he/she may still be guilty of infringing patents owned by others.
The patent process can be broken down into three steps: 1) Application; 2) Examination; and 3) Issuance.
A patentability search is optional. On the positive side, it can help you determine the state of the prior art in order to help determine if a patent application should be filed. On the negative side, anything that is relevant must be disclosed to the PTO. You can learn more about the pros and cons on my blog and I would be happy to discuss any questions that you might have.
Preparation of the Application
The patent application consists of the Specification, Claims, and Drawings. The purpose of the patent application is to describe the invention clearly and with particularity so that one of “skill in the art” can practice the invention. In addition, the claims outline the bounds of the protection given to the patent holder.
The preparation stage can take more time than many clients think it should. However, you should realize that any patent attorney must balance the needs of all of his clients and work on the most urgent matters first. Additionally, once the application is complete, Figures must be sent to a professional draftsman, feedback must be solicited from the inventor and any proposed changes considered. The early this process starts, the earlier I can send you the completed patent application.
After the patent application is complete, it is filed with the U.S. Patent and Trademark Office along with the appropriate government patent application filing fees. There are several ancillary documents that can be filed at the same time or right after filing, such as power of attorney or assignment documents, that serve as direction for the PTO during the examination process.
The filing date is critical in determining the rights of the patent holder. If the inventor has publicly disclosed or sold the invention, they may be prevented from obtaining a patent. If you have disclosed your invention to others, please contact me immediately so that we can discuss how this may affect your rights.
Prior Art Search
The Patent Office receives the patent application and assigns it to an Examiner who evaluates patent applications dealing with the same technical area. Once the application is taken up by an Examiner (which may be a long time after the application is filed), the claims of the application will be searched to see if the Examiner can locate prior art which he/she feels recites similar elements.
This is accomplished by a patent and published patent application search performed by the Examiner, who then reviews the results of the search. Additionally, the examiner reviews the form of the patent application to determine if the patent application is written to the standard set forth by the United States Patent and Trademark Office, and the patent application may irrevocably fail if the patent application has not been written to the appropriate standard.
After reviewing the patent application, the Examiner communicates in writing to the inventor, or to the patent attorney representing the inventor, whether or not the application can issue as a patent. If it cannot, the Examiner explains why not in an Office Action.
Very few patent applications are allowed upon submission without at least one office action. For example, the drawings may have errors, but are used for examination purposes. Alternatively, the Examiner finds the invention in a prior art reference or group of prior art references.
If the Examiner has not allowed the claims, the patent attorney can respond in writing by amending the claims and/or indicating how the Examiner has misinterpreted or incorrectly applied the patents found or the laws applicable to patent applications. Amendments to the claims can only include material found in the original patent application.
The attorney can also discuss the patent application with the Examiner. In the interview, the attorney can discuss the rejection, and attempt to work out language for the claim amendments that would get around the prior art cited by the Examiner.
There can be several rounds of Office Actions and responses. As long as the inventor or his/her representative continue to respond, the Examiner will continue to provide Office Actions, or will eventually be persuaded to issue the application as a patent.
Appeal, Continuing Application or Abandonment
If the application has been rejected, the applicant can appeal to a group of more senior patent Examiners, to the Board of Appeals, or file a continuing application. If you feel that your patent application has been unnecessarily rejected, please contact me and we can discuss which of these options would work best for you.
Notice of Allowance and Issue Fee Due
Once the Examiner has determined that the application should issue as a patent, he sends to the applicant(s) a notice of allowance. Updated drawings may be submitted at this point and the government issue fee must be paid for the patent to issue.
After the patent application issues as a patent and (upon payment of continued maintenance fees), the issued patent is enforceable for up to 20 years (utility patent) or 14 years (design and plant patents) from the date of initial filing. Under certain circumstances, patent term extensions or adjustments may be available.
Maintenance Fees at 3.5, 7.5, and 11.5 years
To maintain a utility patent (but not a design patent) as enforceable, maintenance fees are due at these times to prevent the patent from lapsing and becoming unenforceable. The patent owner generally cannot sue for infringement if the patent has lapsed. I can enter the dates that maintenance fees are due on my docketing system and make sure that they are promptly paid. Please contact me if you feel that this would be helpful in maintaining your patent.
By affording protection for inventors during the patent-enforcement period, society as a whole benefits from the disclosure of new and useful inventions. Having had the right to exclude others from practicing the invention for the period of the patent, the inventor loses this right and anyone can practice the invention once it has expired.