Hiring A Patent Attorney

Patentability of an Invention

Patent Novelty Searches

Differences Between Provisional and Utility Patent Applications

Formal Requirements for Filing a Patent Application


Enabling Disclosure and Best Mode

Duty of Disclosure

Patent Application Publication

Post-Filing Timing

Post-Filing Prosecution

Patent Issuance

Foreign Filing

Critical Deadlines

Summary - The following is intended to provide prospective patent applicants with an overview of the process of obtaining patent protection. This overview is only intended to provide general information concerning patents and does not constitute legal advice. As laws and procedures change frequently, no guarantee is made as to the legal accuracy of any statement contained herein. You should obtain the advice of a registered patent attorney before undertaking any action relating to intellectual property protection.

Overview - In general terms, a patent is a grant of a property right issued by a governmental authority such as the United States Patent and Trademark Office (USPTO). In most countries, including the U.S., a patent confers upon its owner a time-limited right to exclude others from making, using, offering for sale, selling or importing the patented invention in or into the country. The term of a new U.S. utility patent is generally 20 years from the date on which the application for the patent was first filed. It is important to note that a patent does not provide the affirmative right to make, use, offer for sale, sell or import the invention. For example, if another party owns a blocking patent, it is possible that the owner of a patented invention might not have the legal right to practice the invention without first obtaining permission from the other party.

Hiring a Patent Attorney - Preparing and prosecuting a patent application (that is, undertaking proceedings before the USPTO in an attempt to obtain a patent) require knowledge of patent laws and regulations, USPTO practice and procedure, and an understanding of the scientific or technical matters of a particular invention. Although the USPTO allows inventors, in their individual capacity (that is pro se), to prepare and prosecute their own applications, unless they have acquired such knowledge and understanding, we recommend that they obtain the assistance of a registered patent attorney or agent. Patent attorneys are attorneys at law who have also met the requirements to practice before the USPTO. Patent agents are those who have met the USPTO requirements, but are not attorneys at law. Both are competent to prepare and prosecute patent applications, although patent attorneys can provide a wider range of services that require the practice of law, e.g., offering an opinion as to the legal effect of a contract relating to an assignment of a patent.

Patentability of an Invention - Several requirements must be met to obtain a U.S. patent for an invention. Among these requirements, the invention must be both novel and non-obvious. In general, to be novel, the invention must not have been known to the public before it was "invented" by the individual seeking patent protection; must not have been described in a publication or patented more than one year prior to the filing date; must not have used publicly or offered for sale to the public more than one year prior to the filing date; and must not have been described in a patent granted on a U.S. application filed by another before the invention was "invented" by the individual seeking patent protection. In addition to being novel, the invention must also not have been obvious to one skilled in the technology field of the invention. That is, even if the invention is deemed novel because it has one or more differences over the next most similar thing already known, a patent may still be refused if the difference(s) would be obvious to a person having ordinary skill in the technology area of the invention. On the other hand, if the invention's difference(s) supply an unobvious advantage, the non-obviousness requirement will likely be met.

To be patentable, inventions must also be useful and within a statutorily defined class of subject matter. As its name implies, the usefulness (or “utility”) requirement is simply that the invention must have a useful purpose. Almost all things that a potential applicant wishes to patent meet this requirement. Examples of things that do not, include a machine that will not operate to perform the intended purpose, laws of nature, physical phenomena and abstract ideas. Similarly, most things that a potential applicant wishes to patent fall within the statutorily defined class of subject matter as being a “process, machine, manufacture, or composition of matter.” The later phrase has been expansively interpreted to encompass practically anything in the world made by the hand of man, including living organisms and most computer software programs.

Patent Novelty Searches - Obtaining a patent can be an expensive and time-consuming process. Thus, before proceeding, a potential applicant should carefully weigh the potential benefits that patent protection affords against the costs of obtaining, maintaining, and enforcing a patent. To assist the applicant in making a decision on whether to pursue patent protection for an invention, we often recommend that a patentability search be performed. Patentability searches are undertaken to uncover “prior art” relating to an invention, and typically cost about 10-20% of the cost of preparing a patent application. “Prior art” means the entire collection of patents, references, publications, articles of manufacture, etc. that might impact on the patentability of the invention. In a typical patentability search, prior art is obtained by a searcher who combs through the databases and files at the USPTO library to uncover patents relating to the invention. For specialized fields, the inventor is also asked to supply any known references (e.g., from technical journals, competitor's product information, etc.) for consideration. Based on the results of the search, a patent attorney can advise you as to the likelihood of obtaining meaningful patent protection for your invention.

Differences Between Provisional and Utility Patent Applications - Like a regular or “utility” patent application, a provisional U.S. patent application can be filed in the USPTO to establish an effective filing date and allow use of the phrase “Patent Pending.” Provisional patent applications typically cost less to prepare than utility patent applications as the former do not require a formal patent claim, oath or declaration, or any information or prior art disclosure. Provisional patent applications, however, are not examined on their merits, and thus cannot, by themselves, mature into a patent. Within one year from the filing date of a provisional application, a utility patent application (that can mature into a patent) claiming the priority of the provisional application can be filed. This one year date is critical, as a utility patent application filed after this date cannot claim the priority of the provisional application.

A utility patent application claiming priority of a provisional application is examined on the merits, and can therefore lead to issuance of a patent. The up to one year of pendency period of a provisional application is not included in a patent's 20 year term. Therefore, for patents issuing on utility patent applications claiming benefit of the filing date of the provisional application, the patent term can be up to 21 years from the provisional application filing date. In order to receive the benefit of the filing date of a provisional application, the provisional application must, among other things, provide an “enabling” (see below) disclosure of what is claimed in the utility patent application. An applicant generally chooses to file a provisional rather than a utility patent application to lower the initial investment, and to provide a one year period to assess the invention's commercial potential before committing to the higher cost of filing and prosecuting a utility application for patent.

In many cases, we recommend directly filing a utility patent application rather than a provisional application. For example, where the applicant is certain that he will file a utility application, preparing and filing a provisional application will likely add to the overall cost of obtaining a patent. Similarly, where the applicant wants to obtain enforceable patent protection as soon as possible, filing a provisional application will delay this objective. Where an applicant wants to know the USPTO's stance regarding the patentability of the invention as rapidly as possible (e.g., when pursuing foreign protection is being considered), we often recommend filing a utility application rather than a provisional application.

Formal Requirements for Filing a Patent Application - In addition to meeting the criteria for patentability described above, there are several formal requirements that must be satisfied in order to obtain a U.S. Patent. As described below, some of these requirements are the duty to correctly name inventorship, the requirement to provide an “enabling” disclosure of the invention, and the duty to disclose to the USPTO known prior art that may be material to the patentability of the invention. Failure to meet any of these requirements could jeopardize your ability to obtain patent protection for your invention. Accordingly, you should ensure that these requirements are met by, for example, providing all necessary information to the attorney handling your case.

Inventorship - U.S. law requires that inventorship be named correctly in a patent application. The identification of inventors is not discretionary, and the failure to do so can affect the validity of the patent. Because inventorship is a complex legal issue, unless you possess a thorough understanding of inventorship law, we recommend you obtain the advice of a patent attorney. If you engage the services of a patent attorney to prepare and file a patent application, you should provide the attorney the names of all persons who contributed in any way to the development of the invention, and the nature of their contribution before the application is filed.

Enabling Disclosure and Best Mode - To obtain a U.S. patent for an invention, the patent application must be "enabling," and must describe the "best mode" of the invention. To be “enabling,” the patent application must describe the invention in such full, clear, concise, and exact terms that any person skilled in the technological area of the invention would, upon reading the application, understand how to make and use the invention. To meet this requirement, the specification should completely describe the invention, and do it in such a way as to distinguish it from prior technology. To meet the best mode requirement, the patent application must completely describe the most preferred way of carrying out the invention known to the applicant at the time the application is filed. Patent applicants are not obligated to have preferences with regard to their inventions, but if they do, they must disclose these preferences in the application. This requirement does not permit inventors to disclose only what they know to be the second-best way of carrying out the invention, while retaining the best for themselves. Failure to disclose the best mode may cause a patent to be held invalid or unenforceable. Accordingly, when working with a patent attorney, it will be necessary for you to promptly provide a disclosure of your invention that is enabling and sets forth the best mode of the invention.

Duty of Disclosure - Applicants for a U.S. patent application, and any others involved in the application process, have a duty to disclose to the USPTO all information they are aware of that may be relevant to the patentability of the Invention. This duty does not affirmatively oblige an applicant to undertake a search to uncover previously unknown information. Rather, compliance with this duty requires only that the USPTO be provided with all relevant information known to any person involved with the application before filing the application or learned of during the pendency of the application. When working with an attorney, you should provide the attorney with any and all such information prior to the filing of the application with the USPTO, or immediately after such information becomes known after filing of the application.

Patent Application Publication - U.S. utility patent applications filed after November 29, 2000 are published 18 months after the earlier of the filing date or priority date, unless they are first abandoned or the applicant advises the USPTO that no foreign patent protection will be sought. The public will thus be apprised of your invention when it is published. And although provisional rights exist that can sometimes afford protection against those using your invention after it has been published but before a patent has issued, it is important to consider how publication of any previously secret aspects of your invention might affect your rights. We recommend you consult a patent attorney should you have any questions or concerns relating to publication of a patent application. Additionally, you should inform your attorney if you will not seek foreign patent protection for your invention and do not want your application to be published.

Post-Filing Timing - There is no set amount of time to receive a U.S. patent after an application has been filed. Rather, each case varies depending on the applicant's and USPTO's responsiveness. A rough estimate of the time between filing and issuance for an average case is between 12 and 24 months, although this time is typically longer for computer and biotechnology cases. In limited circumstances, the application process can be expedited by filing a petition to make to application “special.” Should an expedited review be desired, we recommend you consult with a patent attorney to discuss this further.

Post-Filing Prosecution - After a utility application is filed, it is “prosecuted” through the patent system. Prosecution is a complex process that can proceed in many different ways. In a typical scenario, after filing a U.S. utility patent application, the USPTO sends the applicant a filing receipt indicating that the application has been received and a filing date assigned. After several months, an Examiner at the USPTO will review the application for patentability and compliance with various other requirements. The applicant will then be notified if the Examiner considers the claimed invention to be patentable or not. If considered patentable, the Examiner will issue a Notice of Allowance/Issue Fee Due inviting the applicant to pay the issue fee. A few months after paying the issue fee, the patent will issue. On the other hand, if the Examiner deems the application defective in some manner or believes the claimed invention to be unpatentable, the USPTO will mail the applicant an “Office Action” describing the reasons the application is defective or the claimed invention is unpatentable. The applicant can then respond by arguing that the Examiner is incorrect and/or the applicant can amend the claims or other parts of the application to address merits of the Office Action. The Examiner can reply to the applicant's response by allowing or rejecting the application. This process can be repeated one or more times.

If no outcome satisfactory to the applicant results and the applicant believes the Examiner is wrong, the applicant can appeal to the Board of Patent Appeals and Interferences. If the decision of the Board of Patent Appeals and Interferences is still unsatisfactory, the applicant can have the matter resolved in a court of law.

Patent Issuance - Once the patent issues, the invention will generally be protected for a term of 20 years from the filing date provided that all required maintenance fees are paid. The actual term can be shorter or longer depending upon the particular circumstances of a particular application. After issuance, progressively increasing maintenance fees are due at four, eight and twelve years after the issue date of the patent. These fees must be paid in a timely fashion to maintain the enforceability of the patent.

Foreign Filing - As U.S. patents are enforceable only within the United States and its possessions and territories, if protection of your invention in other countries is desired, you should consider applying for foreign patent protection. Obtaining foreign patent protection is a complex and expensive endeavor that will require the assistance of patent professionals. There is no such thing as a world patent that provides protection for an invention in all countries. Instead, each country has a separate patent system and protection must be sought in each individual country of interest. Various international treaties provide mechanisms for facilitating this process. Most notable is the Patent Cooperation Treaty (PCT) described in further detail below. In addition, other treaties provide a mechanism for simultaneously pursuing protection in multiple countries in a geographical region (e.g., the European patent application process). Despite these mechanisms, separate applications must ultimately be filed in each individual foreign country in which patent protection is sought.

There are two general procedures through which U.S. applicants typically pursue foreign patent protection. In the first, an applicant who has filed a U.S. application for an invention and received a foreign filing license from the U.S. government, can seek foreign patent protection by directly filing an individual application in each country (or region) of interest. Under international treaties, in most countries, such applications are entitled to the priority date of the earlier filed U.S. application, if filed within one year of the U.S. filing date.

In the second general procedure, the deadline for applying for patent protection in individual foreign countries can be delayed by filing a PCT application. Most of the significant economic countries of the world are members of the PCT and allow patent protection to be sought under this approach. Unlike direct applications in individual countries (that is, “national” applications), a PCT application never matures into a patent itself, but rather forms the basis for later-filed national applications. If a U.S. patent application was previously filed, a corresponding PCT application may be entitled to the priority date of the U.S. application if filed within one year of the U.S. filing date. Filing for foreign protection via the PCT route is advantageous in that it provides a search for prior art references and, optionally, a non-binding examination of the patentability of the invention that can often be persuasive in subsequently filed national applications. Moreover, the PCT process postpones the deadline for entering national applications- a delay often important to applicants not yet committed to the expense associated with simultaneously filing and prosecuting separate patent applications in several different countries.

Critical Deadlines - Dates are critical in the patenting process. Therefore, it is vitally important that you are aware of, and make your attorney aware of, any dates that might affect the patenting of your invention. Some important deadlines are listed below.

United States Deadlines - In the United States, an application must be filed within one year of any public use, sale, offer of sale, or other non-confidential disclosure of an invention. Whether an act constitutes a public use, sale, offer of sale, or non-confidential disclosure is not necessarily a straightforward determination. We therefore recommend you consult with a patent attorney should you have any questions. A brief description of public use and offer for sale is described below to assist you.

A public use should be conservatively interpreted as any non-confidential disclosure that enables another to make and use the invention. Thus, if a potentially patentable feature of a system is readily observable from a display of the system, such as at a seminar or trade show, by a third party not obligated to confidentiality, the patentable feature may be considered a public use.

The "offer of sale" provision of the U.S. patent law creates a deadline when any commercial use of the invention is made, whether the feature is hidden or not. Thus, if a potentially patentable feature of a patentable system is in the interior of the system (e.g., its software code) and not readily observable to third parties, but the system including this hidden feature is the subject of commercial discussions, such as offer for purchase, renting or the like, such commercial activity may be considered an offer of sale.

If an improvement is made to an invention after a first patent application has been filed, it may be possible to file a second application directed to the improvement. We, therefore, generally recommend that any improvements made to an invention for which a patent application has been filed not be disclosed to any other party until a second patent application covering the improvement has been filed.

Foreign Patent Protection Deadlines - The patent laws of foreign countries are, in some respects, more strict and, in other respects, more lenient than U.S. law. For example, unlike the one year grace period provided under U.S. law, many foreign countries impose an "absolute novelty" standard that requires that a patent application be filed for an invention prior to any public use or other non-confidential disclosure of the invention. Many foreign countries, however, do not consider a confidential commercial disclosure or a public display of a system that does not disclose the patentable aspect of the system to bar patentability. If a U.S. patent application has been filed for an invention prior to the occurrence of an act that would normally bar patentability in a foreign country, the invention can still be patented in most foreign countries if a corresponding foreign application or PCT application is filed within one year of the U.S. application. Because patent laws differ among foreign countries, if you are interested in foreign filing, we strongly advise you consult with a patent attorney before making any disclosure of the invention whatsoever to another party.