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PATENTS
Disclaimer: The following material is
informational and general in nature and not intended to be
offered as legal advice. To obtain legal advice an
attorney should be consulted with the specific facts of your
case.
What is a patent?
1.0 Through the United States Patent and
Trademark Office there are actually three different types of
patents that are issued:
1.1 Plant Patents are covered under 35
U.S.C. § 161 protect distinct and new varieties of plants
including cultivated sports, mutants, hybrids and newly found
seedlings other than a tuber or a plant that can be found in an
uncultivated state that can be asexually reproduced (i.e.,
reproduced by layering, budding, grafting, inarching, cuttings
or tissue culture). Plant Patents are a little used form
of intellectual property protection. The application
basically consists of a color photograph of the plant desiring
protection and some paperwork. It should also be
mentioned here that sexually reproduced plants can be protected
by means of the Plant Variety Protection Act that is not a
patent but provides some protection.
1.2 Design Patents are covered under 35
U.S.C. § 171 and pertain to new, original and ornamental
designs for an article of manufacturing. The application
involves a series of drawings showing the article from all
angles and uses solid and broken lines to show what the
inventor considers the ornamental aspects of the invention.
Design Patents are an underutilized form of intellectual
property protection and have the potential to protect both the
ornamental aspects of an invention and also inventions that
cannot be covered by a Utility Patent as discussed below.
1.3 Utility Patents are the most widely
used form of intellectual property protection in the United
States and cover the concepts underlying the invention.
Utility Patent protection is far more difficult to obtain
and therefore more expensive than other forms of intellectual
property protection. Utility Patents are what most people
think of when they use the word “patent.”
2.0 Rights conveyed by all patents:
2.1 The grant of a patent protects patent
owners by granting them the right for a limited time, to
prevent others from making, using, selling or importing into
the United States anything covered by at least one claim of the
affected patent.
2.1.1 Patents are not self-enforcing; when
confronted with alleged patent infringement it is unfortunately
necessary for the patent owner to bring suit against the
alleged infringer in the appropriate United States District
Court (federal).
2.1.2 Contrary to popular belief, a patent
is not an automatic right to make, use, sell or import articles
covered by at least one claim of a patent into the United
States. This is so for the reason that most patents are
improvements on existing technology covered by earlier patents
and to practice the improvement would automatically infringe
the earlier patent.
The process of getting a patent issued
1.0 Initial Meeting The process
generally begins with a meeting between the attorney and the
inventor(s). Usually this takes place face to face but
sometimes it is done electronically. The policy of this
law firm is that if it is the first meeting between us, it is
usually free. The invention is explained and often I
request more detailed information from the client before
getting started.
2.0 Patent Search I often recommend a
professional patentability search be done before starting a
patent application, but it should be emphasized that at the
time this is written (June 2009) a patent search is not
required to be performed. The universe of references
(patents and any published and other information relating to a
particular invention) that might affect the potential scope of
patentability is enormous and at usually between about
$400-$800, it is cheap insurance. If the client is
skeptical about this, I usually recommend the client do his/her
own patent search online at the U.S. Patent and Trademark
Office’s (USPTO) web site at http://www.uspto.gov
3.0 Drafting the Application Assuming
the patent search comes out clean, I begin the process of
drafting the application, usually initially doing some quick
preliminary drawings. This helps to get organized and
makes the actual job of drafting simpler. The drawings
are normally required to have reference numerals attached to
all elements to be claimed. The length of this process
varies greatly depending on the complexity of the invention and
the quality of disclosure from the inventor. Most utility
patent applications take between thirty and fifty hours of
attorney time to complete.
4.0 Client Review When I complete a
first draft of the application I return it to the client for
comments and additional information. Upon its return I
will incorporate the comments and/or information and return it
to the client for a final review. Depending on the
particular case there may be several reviews done.
5.0 Draftsman At this stage the
draftsman gets involved. Using my preliminary drawings as
a guide, the draftsman will create electronic drawings to the
USPTO’s guidelines. I review these, and the client
simultaneously reviews them.
6.0 Filing the Patent Application
When the inventor(s) and I are both satisfied, the
application is filed with the USPTO.
7.0 Examination The application is
received by the USPTO and given to a Patent Examiner who,
hopefully, has an amount of expertise in the particular
technology area of the invention. In most cases, the
application goes to the bottom of the Examiner’s pile and
is taken up for examination in its turn. There is a great
deal of variability in the length of time for Examination;
I have had cases in my career go from filing to issue in
less than a year and I have also had cases take over four years
to be examined. The Examiner’s caseload usually
determines the length of time it takes for examination to
begin.
8.0 Filing Receipt Usually within a
month or so of filing I will receive an “Official Filing
Receipt” from the USPTO which informs us the application
is complete and on file, confirms the filing date, application
number and certain other information.
9.0 IDS After receiving the Official
Filing Receipt I will then prepare an Information Disclosure
Statement (IDS) which is a required document obligating all
persons involved in the patent application process, including
inventors, attorneys and others, disclose to the USPTO any
information known to them that is material to patentability.
Materiality in this sense means anything that would
affect patentability or the breadth of claim coverage.
10.0 Assignment At this point if the
client so desires, I will file an assignment transferring
ownership of the patent application from the inventor(s) to
another entity, which can be another individual or company
(usually an employer).
11.0 First Office Action At some
point the Examiner will get to the application and examine it.
In most cases he/she will find something about the
application preventing patentability, which is reported in a
“First Office Action.” In rare cases the
Examiner can find nothing contraindicating patentability and
issue what is known as a “first action allowance,”
but this is rare (I think it has happened twice in my career).
The First Office Action will explain the reasons why the
Examiner believes the application is not entitled to allowance.
12.0 Response to Office Action Upon
receiving the First Office Action, assuming it is not a first
action allowance, a response is normally submitted within a
three month period from the date of mailing of the Office
Action. This date can be extended up to six months with
the payment of progressively more expensive fees.
Ordinarily the patent application owner’s agent or
attorney handles preparing the Response for the client as the
drafting of it can be tricky. Several reasons for denying
patentability are commonly cited in the Office Action:
12.1 Inadequate Written Description
Sometimes the Examiner will find something about the
written description of the invention he/she doesn’t like.
Ordinarily this can be dealt with by amending the
application to satisfy the Examiner. As long as the
correct information is somewhere in the application, it can
usually be imported into another part of the application.
12.2 Lack of Utility Utility is
covered by 35 U.S.C. § 101 and is rarely a problem.
Utility in this sense refers to an invention that, in the
opinion of the Examiner, either has no use for anything or is
“immoral.” Examples of inventions lacking
utility that no longer are considered as lacking utility are
business methods, baldness cures, perpetual motion devices or
gambling machines (immoral).
12.3 Lack of Novelty Novelty is
covered by 35 U.S.C. §102 and is used when an Examiner
finds a single reference (usually a patent but can also be a
published article or other form of information) that the
Examiner believes contains all the elements of at least one
claim of the application.
12.4 Obviousness Obviousness is
covered by 35 U.S.C. § 103 and is used where an Examiner
is unable to find a single reference containing all the
elements of a claim in the application, but instead finds all
the elements in two or more references. A “person
of ordinary skill in the art” is deemed to be able to
create the applicant’s invention and is increasingly used
to deny patentability. Recent court decisions have
reinterpreted how the obviousness statute are to be applied and
have made obviousness more difficult, but not impossible, to
overcome.
13.0 Final Rejection The payment of
application fees generally allows an applicant two rounds of
arguments with the Examiner. If no allowance is agreed on
after the second Response by applicant, the Examiner will issue
a Final Rejection. Options available after Final
Rejection include:
13.1 Abandonment In most cases, the
Office Action is just ignored and the USPTO within a few months
sends a Notice of Abandonment.
13.2 Request for Continuing Examination
((RCE)- also happens to be my intials!)
13.3 Appeal (before USPTO)
13.4 File a Lawsuit Against the USPTO in
the U.S. District Court for the District of Columbia
Post Patenting Activities
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