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PATENTS
What is a patent?
Does a patent give its owner the right to make the
patented invention?
What are the types of patents?
What is a provisional patent application?
What is the term of a patent?
What is the standard for patentability?
What is a preliminary patentability search?
Can I do my own patent search?
Does a favorable preliminary patentability search guarantee
a patent?
What are the next steps when the preliminary patentability
search is favorable?
When can I use “patent pending”?
What happens during the examination process, and how
long does it take?
What happens when the patent application is allowed
by the USPTO?
What are typical fees for patent services?
Where
can I find more information on patents and the patent process?
What is a patent?
A patent is a grant from the U.S. government of the right
to exclude others from making, using, selling, or offering
for sale the patented invention for a limited time. That
is, a patent gives its owner the ability to seek an injunction
through the federal court system to stop an infringer from
making, using, selling, or offering for sale the patented
invention during the term in which the patent is in force.
Monetary damages may also be awarded for patent infringement.
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Does a patent give its owner the
right to make the patented invention?
No. A patent does not give its owner the unfettered right
to make or sell the patented invention without recourse to
other patent holders. In other words, one may obtain a patent
on a product yet still infringe an earlier patent with claims
that broadly read on the product. For example, if patent
X claims elements A, B and C, someone may be able to later
obtain patent Y claiming A, B, C and D. However, making a
product with elements A, B, C, and D still infringes the
claims of the patent X (because the product includes A, B,
and C).
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What are the types of patents?
There are three types of patents, namely design patents,
utility patents, and plant patents. Design patents protect
the ornamental aspects of an article of manufacture. Utility
patents protect new and useful processes, machines, articles
of manufacture, or compositions of matter. Plant patents
protect new varieties of asexually reproduced plants. Utility
patents are appropriate for the vast majority of inventions.
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What is a provisional patent application?
A provisional patent application is an invention disclosure
document that is filed with the USPTO that affords the inventor
a priority date without meeting all of the formal requirements
of a utility patent application. For example, a provisional
patent application need not include claims, nor do the drawings
have to comply with the formal drawing requirements. To receive
the benefit of the provisional priority date, an applicant
must file a utility application within one year of filing
the provisional application and claim the benefit of the
provisional application.
While a provisional application is an informal disclosure
document that provides a relatively inexpensive way to quickly
get a priority date for an invention, care should be taken
in deciding whether its use is appropriate and, if so, in
how the document is prepared. Even though the provisional
application need not meet all of the formal utility application
filing requirements, it still has to enable one of ordinary
skill in the relevant art how to practice the invention ultimately
claimed in the later filed utility application for those
claims to receive the benefit of the provisional priority
date. Moreover, the provisional application becomes a permanent
part of the record or “file history” of the final
patent. As such, a provisional application disclosure should
be carefully reviewed or prepared by a patent attorney to
make sure it does not include statements or terms that could
later be problematic when attempting to enforce the resulting
patent in court.
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What is the term of a patent?
The term of a design patent extends 14 years from the issue
date. Generally speaking, utility and plant patents have
a term of 20 years from the filing date of the underlying
application, although in some cases the length of the term
or the date from which it is measured may be different.
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What is the standard for patentability?
In the United States, the patentability of any invention
will generally depend upon the Patent Office's decision,
initially expressed by an Examiner, as to whether the invention
is useful, novel, and unobvious. These requirements are set
forth in the Patent Statute. In particular, Sections 102
and 103 relate to the differences between the invention and
the prior art. Section 102 requires that an invention be
novel in the sense that it has not been disclosed by any
single prior art reference. Section 103 requires that the
differences between the invention and the prior art be such
that the invention would not have been obvious, at the time
it was made, to a person having ordinary skill in the art.
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What is a preliminary patentability
search?
A preliminary patentability search involves a search of
the U.S. Patent and Trademark Office’s (USPTO’s)
records to find the most pertinent prior art relating to
an invention. “Prior art” is the existing body
of technological information against which an invention is
judged to determine if it is novel and non-obvious and can
thus be patented. An inventor initially discusses the invention
with his or her patent attorney, who then works with a professional
search agent to locate the most pertinent references from
the USPTO records. The patent attorney can then evaluate
whether patent protection is likely to be available based
upon the located references, as well as the potential scope
of the patent protection. Knowing the potential scope of
patent protection allows the inventor to make an informed
business decision about whether seeking patent protection
is worth the investment of time and money. Moreover, the
results of the preliminary patentability search are invaluable
to the patent attorney in crafting claims for the patent
application that can withstand the USPTO’s scrutiny
during the examination process.
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Can I do my own patent search?
The USPTO makes copies of issued patents and published applications
available on its Web site, many of which are available for
text or “key word” searching. Click
here for the USPTO patent search page. The USPTO’s
online database provides an excellent starting point for
familiarizing oneself with the form and contents of a patent,
as well as the types of patents available in a given field.
However, the online search interface does not allow for the
use of complex search strings, which often makes it difficult
to locate and narrow down the most relevant search results
to a manageable number. This is particularly true in art
areas where thousands of patents and patent publications
are available. Our professional search agents have access
to the more sophisticated search systems in use at the USPTO
and are therefore able to use their experience and expertise
to quickly hone in on the most pertinent prior art.
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Does a favorable preliminary patentability
search guarantee a patent?
Not at all. While the USPTO is an excellent source for determining
what technical information is in the public domain, prior
art is not limited to patent documents. Prior art may also
include publications (articles, papers, etc.), sales of an
invention, or even uses of the invention in public, none
of which are covered in a typical preliminary patentability
search. Moreover, patent applications currently are maintained
in secrecy by the USPTO until they are published, which occurs
sometime after the application has been pending for eighteen
months. For these and other reasons, a preliminary patentability
search is not a perfect representation of all of the art
that may be applicable to a given invention. Even so, the
publicly available repository of patents and published applications
at the USPTO is one of the best single sources of prior art
documents available. Moreover, this is the primary source
of prior art the Examiner will use when he or she performs
a search of a patent application. As such, the preliminary
patentability search is a relatively inexpensive way to gain
a great deal of information about the current state of the
art.
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What are the next steps when the
preliminary patentability search is favorable?
If the preliminary patentability search results are favorable,
this is when the patent attorney prepares the utility patent
application. When the initial draft of the application is
complete, the draft is provided to the inventor for his or
her review to make sure the application is technically accurate
and complete. The inventor’s comments are carefully
considered in the preparation of the final draft, which is
presented to the inventor for review prior to filing. The
USPTO requires that each inventor sign a Declaration when
the application is filed in the USPTO acknowledging a duty
to disclose information of which he is aware and which may
be considered to be material to the examination of the application.
Such information may possibly include devices, products,
publications, etc. which are similar to the invention and
which were publicly known before the invention, and it may
also include any public disclosure, commercial use, or offer
of sale of the invention more than one year prior to the
filing date of the application.
A utility patent application typically includes the following
parts: background of the invention, summary of the invention,
brief description of the drawings, and detailed description
of the preferred embodiments, the claims, and an abstract
of the disclosure. Of these, the claims are the heart of
the application in that they define in words the scope of
the invention for which the applicant seeks a limited monopoly
from the government. The background sets forth the state
of the relevant technical art and defines the need that the
claimed invention fulfills. The abstract is a very brief
summary of the claimed invention, and the summary section
summarizes the claimed invention in further detail. The drawings
illustrate the various elements of the invention recited
in the claims, while the brief description of the drawings
quickly orients the reader of the patent to what each drawing
illustrates. Lastly, the detailed description of the preferred
embodiments is where the elements of the drawings are described
in further detail and various examples and embodiments of
the invention are fully elaborated.
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When can I use “patent pending”?
Once a utility (or provisional) patent application is filed
with the USPTO, the inventor may then begin marking any products
covered by the claims of the application as “patent
pending,” so long as the application is actually pending
before the USPTO. The “patent pending” indication
serves as a warning to others who might otherwise make, use,
or sell an identical product that patent protection is being
sought from the USPTO.
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What happens during the examination
process, and how long does it take?
Once an application is filed with the USPTO, it is assigned
to the relevant technology area or “art unit,” and
ultimately to the individual Examiner who will examine the
application. The Examiner reviews the application to make
sure it complies with the numerous USPTO rules and requirements,
and he or she also performs a patentability search based
upon the claims that are included in the application. Initially,
the Examiner typically issues an Office Action report rejecting
at least some of the claims and detailing the reasons for
the rejection and the prior art upon which the rejection
is based. It typically takes more than a year (and often
two to three years) to receive a first Office Action from
the USPTO depending upon the backlog of applications they
have to examine in a particular art unit. Currently, the
average patent application pendency is 27.6 months (Source: “Fiscal
Year 2006 Performance Plan” available at http://www.osec.doc.gov/bmi/budget/06APP/PTO06APP.pdf).
When an Office Action is received from the USPTO, your patent
attorney (who receives correspondence from the USPTO on your
behalf) studies the rejection set forth therein and advises
you how best to proceed. Usually this involves preparing
and filing a written response including arguments as to why
the claims are patentable over the prior art cited by the
Examiner and/or amendments more clearly defining the claims
over this prior art. In some cases multiple Office Actions
and responses are exchanged by the USPTO and applicant before
a patent is ultimately granted or the application is abandoned.
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What happens when the patent application
is allowed by the USPTO?
Once an Examiner decides that an application is in condition
for allowance, the USPTO issues a Notice of Allowance informing
the applicant that the issue fee and publication fees are
due. After issuance of the patent, the applicant is required
to pay maintenance fees 3½, 7½, and 11½ years
after the issue date to keep the patent in force. Click
here for a list of current government patent fees.
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What are typical fees for patent
services?
The American Intellectual Property Law Association (AIPLA)
in its Economic Survey of 2007 surveyed patent practitioners
from across the U.S. and reported the following approximate
median costs for patent legal fees:
- Preliminary Patentability Search - $2.2K
- Provisional
Application Preparation & Filing - $4.2K
- Utility Application
Preparation & Filing - $6.5-12K
(depending upon area of technology and complexity)
- Office
Action Response Preparation & Filing - $1.5K-3K
(depending upon area of technology and complexity)
- Processing/Payment
of Issue Fee and Other Post Allowance Activity
- $500
The above costs are only for the patent attorney’s/patent
agent’s fees, and do not cover additional charges such
as search agent fees, U.S. government application filing
fees, and formal drawing preparation fees, which can add
several thousand dollars. Moreover, U.S. government issue
and publication fees are also due prior to the issuance of
a patent. Government maintenance fees will also be due 3½,
7½, and 11½ years after the patent issues. Click
here for a list of current government patent fees.
The fees we charge for a given patent matter will depend
upon the complexity and difficulty of preparing and prosecuting
the application, which we can determine after reviewing your
invention. Please contact
us and ask to speak with one of our patent practitioners
for further assistance.
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Where can I find more information
on patents and the patent process?
Visit the USPTO’s patent
information Web page, inventor
resource Web page, and/or general
questions Web page. For a glossary of patent and intellectual
property terms, click
here.
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The information included herein is for informational purposes
only. The Firm does not intend to create an attorney-client
relationship with you by providing this information.
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