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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

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Richard C. Emery 
Intellectual Property Attorney
3564 Rollingview Dr Suite G
Whitebear Lake, MN 55110
(651) 704-0080
Fax (651) 704-0079
rcemery@emeryiplaw.com