Patents
What Is a Patent?
When a person invents something that is new, useful, and is not obvious, the government is empowered to reward the inventor with a patent which gives the inventor the exclusive right to invention in the United States. The patent thereby gives the inventor the right to exclude others from making, using, offering for sale, or selling the invention in the United States, or from “importing” the claimed invention into the United States.
What Can Be Patented?
The inventions can by any new and useful process, machine, manufacture, or composition of matter, including a new and useful improvement thereof. Patentable processes can include not only industrial or technical processes, but also business methods. Computer software may also be patented if its subject matter meets the conditions for patentablity. Essentially, practically “everything that is made by man” may be patented.
What Cannot Be Patented?
Patents do not cover laws of nature, physical phenomena, and abstract ideas. Inventions directed to utilizing special nuclear material or atomic energy in an atomic weapon are also generally excluded from patent coverage.
Are There Different Types of Patents?
Yes. Three different types of patents exist under United States law:
- Utility patents, as discussed above, cover any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. This type of patent covers the invention described in words of its claims.
- Design patents cover a new, original, and ornamental design for an article of manufacture. The design patent protects only the appearance of an article, not its functional features. The drawings define the scope of patent protection.
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
How Long Does a Patent Last?
A utility or plant patent generally lasts for a term of 20 years from its filing date. A design patent lasts 14 years from its issue date. For a patent to remain in effect for its complete term, periodic maintenance fees must be timely paid.
Where is a U.S. Patent Effective?
U.S. patents are legally effective within the United States, U.S. territories, and U.S. possessions.
What Makes an Invention Patentable?
To be patentable, an invention must be new. This means, under U.S. law, that it was not already “known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent.” Nor can the invention have been “patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”
Therefore, if the invention was described in a printed publication anywhere in the world, or if it was known or used by others in the U.S. before the date that the applicant invented it, it cannot be patented. Likewise, if the invention was described in a printed publication anywhere, or was in public use or on sale in the U.S. more than one year prior to the patent application’s U.S. filing date, it cannot be patented.
The invention must also be “nonobvious” in order to be patentable. This means that the invention must be sufficiently different from what has been previously made or used or described that it can be considered as a nonobvious to a person having ordinary skill in the area of technology to which it relates. If, for example, literature already shows a chemical process that is the same as the invention, other than the substitution of a particular chemical, and that particular is a commonly known substitution, the invention is not patentable. Small obvious differences are not patentable.
When an inventor describes the invention in a printed publication, uses the invention publicly, or places it on sale, he or she must apply for a patent before one year has passed or lose the right to a patent. Furthermore, in order to preserve patent rights in many foreign countries, the inventor must file on or before public use or disclosure,
Do Patent Applications Remain Secret After They Are Filed?
The patent application will be published, and its related records will be make publicly available, after an 18-month period following the earliest effective filing date or priority date. Following publication, any member of the public may request access to the entire patent application file. However, until they are either published (in their 18th month after filing) or are issued as patents, applications for patents are not generally open to the public, and information concerning them is not released except with the written authority of the applicant, his/her assignee, or his/her attorney, or when necessary to the conduct of the business of the USPTO.
Can I Request that My Patent Application Not Be Published?
A request can be made that a plant or utility application not be published if a patent application for the invention has not been and will not be filed in a foreign country that requires publication. Publication provides an applicant with certain pre-grant rights, including the opportunity to obtain damages for pre-patent grant infringement where a third party whom infringes a claim of a published application is provided actual notice by the applicant, and a patent issues from the application with a substantially identical claim.
How is a Patent Obtained?
In order to secure a patent, an application must be made to the U.S. Patent & Trademark Office in the name of the inventor. If two or more persons make an invention jointly, then the application must name all the joint inventors. (A person who makes only a financial contribution is not a joint inventor.)
What Must Be Included in a Patent Application?
A patent application must include a written specification, which provides a detailed description of the invention, abstract, background and summary of the invention, an oath or declaration that the inventor believes himself/herself “to be the original and first inventor of the subject matter of the application”, and claims that defining the legal scope of the patented invention. Drawings must also be included as necessary, along with government filing, search and examination fees. The USPTO Web site at http://www.uspto.gov shows the current fees. Most of the fees are subject to change in October of each year. If the owner of the invention is a small entity, (an independent inventor, a small business concern or a non-profit organization), most fees are reduced by half if small entity status is claimed.
Specification (Description and Claims)
- Title of the Invention.
- Cross Reference to related applications (if any). (Related applications may be listed on an application data sheet, either instead of or together with being listed in the specification.)
- Statement of federally sponsored research/development (if any).
- Reference to a ”Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation by reference of the material on the compact disc. The total number of compact disc including duplicates and the files on each compact disc shall be specified.
- Background of the Invention.
- Brief Summary of the Invention.
- Brief description of the several views of the drawing (if any).
- Detailed Description of the Invention.
- A claim or claims.
- Abstract of the disclosure.
- Sequence listing (if any).
The patent application is usually given the filing date on which a specification (including at least one claim) and any necessary drawings are received in the USPTO. It is not forwarded for examination until all required parts, complying with all the rules related thereto, are received.
Any submitted drawing must show every feature of the invention specified in the claims, and is required by the Office rules to be in a particular form. Patent Drawing standards may be seen at:
http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_84.htm
Models or exhibits are generally not required in most patent applications since the specification and the drawings must be sufficiently full, clear, and complete and capable of being understood to disclose and describe the invention without the aid of a model.
If the invention is a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for inspection or experiment. If the invention is a microbiological invention, a deposit of the micro-organism involved is required.
Examination of Applications and Proceedings in the United States Patent and Trademark Office
A complete patent application is assigned to the examining technology center for the technology area of the invention, and normally examined by the assigned examiner in the order in which it was received. Under certain special circumstances, an application is not taken out of turn.
When the application is examined, the examiner will study tit for compliance with all applicable statutory requirements. The examiner will also search through U.S. patents and published applications, foreign patent documents, and available literature, to test if the invention claimed is new, useful and is not obvious. If the examiner's decision on patentability is favorable, a patent is granted. Otherwise, the application is rejected with the reasons for rejection stated in the Office Action communicating the rejection. An opportunity is given to the applicant, sometimes several, to cure the defect or to argue for the patenting. The USPTO reports that on average two out of every three patent applications lead to issued patents. If the examiner persists in rejecting the application, the applicant may appeal to the USPTO’s Board of Patent Appeals and Interferences. Alternatively, the applicant can make a request for request for continued examination (RCE) if the applicant wishes the examiner to consider different claims or evidence.
If the Board of Patent Appeals and Interferences rules adversely to the applicant, the applicant can take a further appeal to the Court of Appeals for the Federal Circuit or a civil action may be filed (against the Director) in the United States District Court for the District of Columbia. The Court of Appeals for the Federal Circuit will review the record made in the Office and may affirm or reverse the Office’s action. In a civil action, the applicant may present testimony in the court, and the court will make a decision.
Design Patent Examination & Issuance
Design patents are examined by the USPTO for the novelty and nonobviousness of the ornamental design. The proceedings relating to granting of design patents are otherwise generally the same as those relating to utility and plant patents. If on examination it is determined that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. A design patent has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force.
Plant Patent Examination & Issuance
A plant patent may be granted to anyone who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant, or has discovered a new plant found in an uncultivated state. Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.
A plant patent application consists of the same parts as other applications. The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical text books or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad non-botanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage of the plant variety sought to be patented and must particularly point out where and in what manner the variety of plant has been asexually reproduced. The Latin name of the genus and species of the plant should be stated. Where color is a distinctive feature of the plant, the color should be positively identified in the specification by reference to a designated color as given by a recognized color dictionary. Where the plant variety originated as a newly found seedling, the specification must fully describe the conditions (cultivation, environment, etc.) under which the seedling was found growing to establish that it was not found in an uncultivated state.
A plant patent is granted on the entire plant. It therefore follows that only one claim is necessary and only one is permitted.
The Plant Variety Protection Act provides for a system of protection for sexually reproduced varieties, for which protection was not previously provided, under the administration of a Plant Variety Protection Office within the Department of Agriculture.
Patent Allowance and Issuance
If the patent is ultimately allowed to issue, the applicant will be notified and must pay an issue fee with 3 months or risk the application being found to be “abandoned.”
If publishing an application will be detrimental to the national security, the Comissioner of Patents can order that the invention be kept secret and can withhold the publication of the application or the grant of the patent for such a period as the national interest requires.
Patent Extension and Adjustment
Some patent terms may be extended or adjusted from certain specified types of delays caused by the USPTO which may occur while an application is pending, such as not acting within specific time frames or failing to issue a patent within three years of the actual filing date of the application. Delays due to interference proceedings, secrecy orders, successful appellate review and/or FDA approvals can also result in patent term adjustments.
Any patent term adjustment will be offset by unreasonable delay caused by the applicant. An initial patent term adjustment value is printed on the notice of allowance and fee(s) due, and a final value is printed on the front of the patent. A request by the applicant for reconsideration of the term adjustment value may be filed prior to or at the same time as the payment of the issue fee.
Paying Maintenance Fees
Maintenance fees must be paid to maintain utility patents in force. The maintenance fees are due at 3 1/2, 7 1/2 and 11 1/2 years from the date the patent is granted. These fees can be paid with no surcharge during the “window-period,” this is the six-month period that precedes each due date.
Failing to pay the current maintenance fee will result in expiration of the patent. A six-month grace period following the due date is provided when the maintenance fee may be paid late but with an added surcharge. The USPTO does not mail notices to patent owners that maintenance fees are due.
Correcting Patents
Once the patent is granted, it is generally no longer handled by the USPTO except under certain limited circumstances. The USPTO has the power to issue (without charge) a certificate that corrects any typographical errors that it made in the printing of the patent when the printed patent does not correspond to the record. The patent applicant may also correct, under some circumstances, certain clerical errors of the applicant by a certificate of correction (for which a fee is required.) The patentee may also disclaim one or more claims of his/her patent by filing a statutory disclaimer.
When the patent is defective in certain respects, such as by an applicant unintentionally claiming an invention too narrowly, a patentee may apply for a reissue patent. Following an examination in which the proposed changes are evaluated as not adding “new matter”, the USPTO can reissue the patent so that the new patent replaces the original one for the balance of the unexpired term. However, the nature of the changes that can be made by means of the reissue are limited in that no new matter can be added.
Any person may also file a request for reexamination of a patent, along with the required fee, on the basis of prior art consisting of patents or printed publications.
Treaties and Foreign Patents
U.S. patent rights extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.
The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the application will bar the right to a patent. Many foreign countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries, although in most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.
A treaty, known as the Paris Convention, provides that each country guarantees to the citizens of the other participating countries the same rights in patent and trademark matters that it gives to its own citizens. This treaty has 168 participating countries, including the United States. The treaty also provides for the right of priority in the case of patents, trademarks and industrial designs (design patents). This right affords an applicant a priority date of the date of his/her first filing first filing date in one of the member countries for all subsequent applications in other member countries filed within a certain period of time after the first application, typically if they are filed within one year of the original application. Thus, these later applicants will keep priority over applications for the same invention that may have been filed in the interim by other persons. These later applications, being based on the first application, will also not be invalidated by any acts accomplished in the interval, such as, for example, publication or exploitation of the invention, the sale of copies of the design, or use of the trademark. The period of time mentioned above, within which the subsequent applications may be filed in the other countries, is 12 months in the case of first applications for patent and six months in the case of industrial designs and trademarks.
Another treaty, known as the Patent Cooperation Treaty (“PCT”), adhered to by over 124 countries including the United States, facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application format.
The timely filing of an international application under the PCT affords applicants an international filing date in each country designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications must be filed. A number of patent attorneys specialize in obtaining patents in foreign countries.
Can I Do My Own Patent Search to See if My Invention has Already Been Patented?
Inventors can make a search of the prior patents and publications before applying for a patent. This may be done in the Patent Search Room of the USPTO, and in libraries, located throughout the United States, which have been designated as Patent and Trademark Depository Libraries (PTDLs), as well as on-line searches at www.uspto.gov.
What is a Patent Attorney or Agent?
Both are registered Preparing patent applications and conducting proceedings in the USPTO to help a client to obtain a patent is an undertaking which requires knowledge of patent laws and rules, and USPTO practices and procedures, in addition to the knowledge of the scientific or technical matters involved in the particular invention.
Inventors often employ the services of registered patent attorneys or patent agents. These are people that the USPTO has recognized and permits to practice before the USPTO. The USPTO maintains a register of such recognized attorneys and agents, and persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.
Patent attorneys and patent agents are permitted to prepare patent applications and conduct the prosecution of patents in the USPTO on behalf of a client. Patent agents, in contrast to patent attorneys, cannot conduct patent litigation in the courts or perform various services which are considered by the local jurisdiction as practicing law. DISCLAIMER
Every case is unique and requires an experienced attorney to address your particular situation. Please do not consider any of the information provided here to replace a personal consultation with an experienced IP lawyer.
Call Smith and Garg today at 281.210.0010 or complete our Contact Form and let us assist you with your intellectual property law services and litigation needs.
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