Patents

What Is a Patent?

A patent is a type of intellectual property that is a grant of property rights to an invention or to an improvement to an existing invention.  The United States Patent and Trademark Office (USPTO) examines patent applications and grants patents in the United States.  In the U.S., three types of patents may be applied for and granted by the USPTO:

  • Utility Patent – A utility patent is granted to an inventor who invents or discovers any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement of any of the foregoing.  Two types of utility applications – provisional and nonprovisional – may be filed, however, only a nonprovisional application is examined by the USPTO and may result in a patent.Utility patents are useful for protecting inventions that are mechanical, chemical, electrical, biological, and software in nature as well as processes and methods related to any of the foregoing and inventions related to business methods.  Utility patents are the most common type of patent.  If your invention does not relate to an ornamental design or a plant, you most likely require a utility patent.
  • Design Patent – A design patent is granted for the invention of a new, original, and ornamental design for an article of manufacture.Design patents are used to protect the visual ornamental characteristics, which are embodied in or applied to an object (i.e., an article of manufacture).The design may relate to the configuration or shape of the article, to surface ornamentation applied to the article, or to a combination of the foregoing.
  • Plant Patent – With some exceptions, a plant patent is granted to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant.The plant cannot be one found in an uncultivated state or one that is propagated from a tuber.  Hybrids, mutants, sports, and transformed plants are protectable by plant patent, as are macro fungi and algae, however, bacteria are not.
What Types of Subject Matter Cannot Be Protected By Patent?

Under U.S. law, certain types of subject matter are not patentable.  Examples of unpatentable subject matter include abstract ideas, laws of nature, and natural phenomena.  These categories also encompass processes of human thinking as well as systems that depend on human intelligence alone for their operation. Algorithms, food recipes not claiming any health or other beneficial effects, forms of energy including transmissible data packets, naturally occurring organisms, a game defined as a set of rules, and mere arrangements of printed matter also are not patentable under U.S. law.  Additional categories of subject matter are unpatentable in the United States and in foreign countries. 

What Are the Parts of a Patent Application?

Patent applications (other than provisional patent applications) contain three distinct parts: the specification, the drawings, and the claims.

The specification includes all of the text that provides brief and detailed descriptions of the invention and any alternate embodiments as well as brief descriptions of the items shown in the patent drawings.  The specification may include certain distinct sections including a cross-reference paragraph to related applications, the field of the invention, a description of the background of the invention, a summary, an abstract describing the invention that will be printed on the cover page of the published patent application and any patent that issues from the application, and a detailed description of the invention or inventions disclosed in the application.

The drawings illustrate various views of the invention described in the claims of the application.  Alternate embodiments (for example, variations in structure among different versions of the invention) may also be shown in the drawings.  Drawings for inventions related to software, business methods, and other method-related inventions may be included in the application in the form of flowcharts and diagrams.

The claims are the most important part of a patent application and patent.  The claims describe the metes and bounds of the subject matter for which patent protection is being sought in a pending patent application and for which patent protection has been granted by the USPTO in an issued patent.  The specification and drawings are used to interpret the meaning of terms used in the claims where the plain meaning of the claim language is inconsistent with the use of such terms in the specification. 

What Is the Difference Between a Nonprovisional Application and a Provisional Application?

Nonprovisional patent applications are examined by the USPTO, and if the invention claimed in a nonprovisional patent application is found to be patentable, a patent may issue from the nonprovisional application.  On the other hand, provisional patent applications are never examined by the USPTO but may be filed for various legal and business reasons, however, no patent can issue from a provisional application.  In most cases, filing a provisional patent application preserves the right to file a nonprovisional patent application for an invention within one year of the filing date of the provisional application.

Should I Conduct a Patent Search?

Patent searches (also known as patentability searches or novelty searches) are strongly recommended as part of our strategy to identify the inventions or portions of inventions that may be patentable in view of existing prior art.  The term “prior art” refers generally to any publicly available written information in the form of references (i.e., an issued patent or published patent application in the United States or another country, or any other writing such as, for example, a reference book, a newspaper article, scientific journal or trade magazine article, or an advertisement) that is relevant to the patentability of the subject matter for which protection is being sought, subject to certain date requirements.  Effective prior art references may be cited by the USPTO to reject some or all claims of a patent application.

Although conducting a patent search is strongly recommended prior to filing a nonprovisional patent application, such searches are optional.  Note, however, that the USPTO conducts prior art searches as part of its routine examination of each patent application.  Due to issues related to the date and public availability as well as the subject matter described therein, not all references located through a patent search conducted by a patent applicant or by the USPTO will constitute prior art.  Under U.S. patent law, references discovered by or known to an inventor, patent applicant, or the inventor or applicant’s patent attorney, which are relevant to the patentability of the claims set forth in the patent application, must be disclosed to the USPTO for consideration in its examination of the application.  Failure to disclose such references may result in the subsequent invalidation of any patent that issues from the application.

In addition to patentability searches, our firm assists clients in conducting freedom-to-operate (also known as patent clearance) searches and opinions.

What Happens After a Patent Application Is Filed?

After a patent application has been filed and once it has successfully undergone pre-examination by the USPTO to ascertain that it complies with certain procedural requirements, unless a request for non-publication has been filed by the applicant, the application will be published 18 months after its earliest priority date (calculated from the date of filing of the application or from the date of filing of any application to which the application asserts a claim of priority, whichever is earlier) at which time the application becomes a publicly available record.  After a typical extended period of inactivity, the application will be assigned to an examiner at the USPTO who will review the application, conduct prior art searches, and issue rejections based on any prior art located through those searches as well as on any informalities noted in the application.

Rejections are raised by the examiner in USPTO-issued correspondence known as office actions.  The patent applicant is provided with an opportunity to respond to attempt to overcome the rejections through argument, amendment of the claims or other parts of the applications, or a combination of both.  Several office actions may be received in connection with a patent application before a patent is granted.  Once the examiner is satisfied that all issues raised in the rejections have been addressed and overcome, the application may be allowed after which it may ultimately issue as a patent after all governmental fees have been paid and if no new reasons for rejection are raised by the USPTO.

If the rejections in a USPTO office action cannot be overcome, other options may be available for continuing the pursuit of patent protection for the invention.  Where a response to an office action is not filed within the allotted time for responding, the application will become abandoned.  Generally, once a patent application becomes abandoned, if no additional patent applications for the invention have been filed, any potential patent right that may have otherwise existed is lost.

How Long Is the Life of a Patent?

The term, or life, of a patent varies according to the type of patent granted and other factors.  Generally, the terms of utility patents and plant patents begin on the date the patent issues and usually expire 20 years from the filing date of the patent application.  On the other hand, the term of a design patent generally expires 14 years after the date on which the design patent is granted.

Can Rights to a Patent or Patent Application Be Granted to Another Person or Business Entity?

Ownership rights in a patent or patent application (and the invention or inventions disclosed therein) can be transferred entirely or in part to another person or to a business entity by a patent assignment.

Without transferring ownership rights in a patent or patent application (and the invention or inventions disclosed therein), limited rights to make, use, sale, offer for sale, distribute, and/or import the invention or inventions that are the subject matter thereof may be granted by the patent owner or patent applicant to a licensee that is another person or a business entity by means of a patent license agreement.

Does the USPTO Enforce a Patent Owner’s Patent Rights Against Infringers?

The USPTO determines whether a patent should be granted for an invention or design, however, the USPTO does not enforce patents.  Enforcement of a patent is the responsibility of the patent owner.  Monetary damages and injunctive relief may be sought against an infringer of a patent through patent infringement litigation.

What Happens Once a Patent Expires or a Published Patent Application Becomes Abandoned?

When a patent expires, the subject matter of the expired patent becomes public domain information that may be freely used by anyone.  Similarly, when a published patent application, which is for an invention for which no other patent application has been filed, goes abandoned, the subject matter of the abandoned published patent application also becomes public domain information that may be freely used by anyone.

Can an Invention or Design Be Protected By a “Poor Man’s Patent”?

No, the “poor man’s patent,” in which an inventor mails a signed copy of his or her invention’s description or drawings to himself or herself that is retained by the inventor unopened with its post mark and contents intact, is not an effective means for protecting and obtaining any rights to one’s invention.  Under U.S. law, only a patent granted by the USPTO can provide an inventor with a grant of property rights in and to the inventor’s invention.

When Can the Patent Markings “Patent Pending,” “Patented,” and a Patent Number Be Used?

Patent markings serve to notify the public that an article or other invention is patented, or in the case of “Patent Pending,” that an application to patent the article or other invention has been filed with the USPTO.

Patent owners and their licensees who sell patented articles are required to mark the patented articles with the marking “Patent” or “U.S. Patent” and the patent number, for example, U.S. Patent No. 1,234,567.  Failure to do so negatively impacts the patent owner’s ability to recover damages from infringers.  Federal law provides other marking options for inventions that cannot be readily marked with the required marking.

Patent applicants may use the marking “Patent Pending” or “Patent Applied For” on articles for which patent protection is being sought in a pending patent application, however, no legal requirement requires such markings to be used.

False use of the foregoing markings (e.g., using one of the markings reserved for patented articles and other inventions when no patent has been granted; or using “Patent Pending” or similar language with an article when no patent application has been filed) is known as false marking.  False marking is a violation of federal law that may subject the violator to governmental fines as well as civil lawsuits from competitors.

Can Inventions and Designs Be Protected in Foreign Countries?

Inventions and designs are also protectable by patents and industrial design registrations in foreign countries.  Our registered patent attorneys and staff assist clients in filing and prosecuting patent applications and industrial design applications seeking protection for their inventions and designs in foreign jurisdictions worldwide.  Foreign countries and jurisdictions in which our clients commonly seek patent protection for their inventions include Canada, Europe, Mexico, Brazil, Japan, China, Russia, South Korea, India, Australia, South Africa, and New Zealand, among others.

Please contact one of our registered patent  attorneys if you are interested in conducting a patentability search or if we may assist you in the preparation and filing of a patent application in the United States or in any foreign jurisdictions or with the drafting or negotiation of a patent license agreement.