Washington, Disctrict of Columbia
Utility Patent Practice
Regular U.S. Utility Patent Application
The regular U.S. utility patent application (hereinafter "regular application") covers the creation of a new or improved and useful, product, process, and/or machine. The regular application has four parts, the abstract, the claims, the drawings and the written specification. The application must teach how to make and use the invention. You need not actually reduce your invention to practice. The regular application can be based on your idea alone
Once filed, no new matter can be added to the regular application. The regular application will be examined by a U.S. patent examiner for novelty, non-obviousness and compliance with the formal requirements. If the examiner determines that the regular application contains novelty, is not obvious, and meets the formal requirements, the patent will be allowed to issue after payment of an issue fee. The term of the patent is 20 years from the filing date, plus U.S. Patent Office delays.
The regular application can claim priority to an eariler filed U.S. patent application and/or foreign patent application. The regular applicaiton must be filed within one year of the earliest priority claimed to properly claim prioirity.
Duiring examination of the regular application, the inventor(s) and owner have a duty to disclose material prior art to the U.S. Patent Office. See 37 C.F.R. 1.56.
U.S. Provisional Patent Application
The U.S. provisional patent application (hereinafter "provisional") covers the creation of a new or improved and useful, product, process and/or machine. The provisional is a less formal and less espensive way to obtain a U.S. filing date than the regular application. The provisional will not be examined and will go abandoned one year from the filing date. The provisional application does not a have the same formal requirements as the regular application. For example, hand drawings, brochures, and other documents may be filed as part of a provisional. While claims are not required, I strongly recommend including claims in the provisional. Once filed, the provisional cannot be amended. Thus, care must be taken to file accurate and complete drawings, claims, and description of how to make and use the invention to ensure a good filing date. The provisional application does not start the 20 year patent term. Thus, up to an additional year can be added to the patent term by filing the provisional application.
If there is a likelihood that changes and/or additions to the invention will be made within one year of the provisional U.S. filing date, the use of multiple provisionals provides a way to incorporate the changes and/or improvements without the need to file a continuation-in-part or a separate new regular application. As changes and/or additions are made, multiple provisionals can be filed during the one year earliest provisional term. Before the earliest filed provisional expires, a regular application, regular foreign patent appliction and/or international PCT application must be filed to properly claim priority to all of the provisional applications. Each claim in the regular application will be accorded a filing date based on which provisional supports the claim.
International Patent Cooperation Treaty Application
The international Patent Cooperation Treaty Application (hereinafter "PCT") provides an efficient and cost effective way to extend the due date for filing foreign patent applications in each desired country and also provides an examimation by a patent examiner. Normally, the foreign patent application(s) must be filed within one year of the earliest U.S. priority date claimed. By filing a PCT application, the due date for filing the National Phase PCT applications in each desired foreign country is extended to 30 or 31 months from the earliest priority date claimed. The PCT must be filed within one year of the earliest priority date claimed. The priority can be provisionals, regular applications and/or foreign patent applications. See www.wipo.int for a list of the PCT member countries.
Prior Disclosure of Invention
The inventor(s) has one year from the date of first public disclosure, public use, publication, sale or offer for sale of the invention, in which to file a provisional or regular patent application or the inventor(s) will be forever barred from obtaining a U.S. Patent to the invention. Foreign countries have even stricter standards in which publicly disclosing the invention before filing can be a bar from obtaining a foreign patent.
Prior Art Search
Your are not required to conduct a prior art search prior to filing a provisional or regular patent application. You can search the publicly available prior art databases www.patents.google.com for worldwide patents and published appliations, and search the www.uspto.gov databases for published U.S. patent applications and U.S. patents. If you would like to hire a professional prior art searcher, I suggest hiring an ex-U.S. patent examiner, since they have extensive experience in prior art searches and are usually less costly than highing a lawyer to conduct the prior art search. There are many prior art search firms having ex-U.S. patent examiners available on the internet. I can recommend a patent searcher if you would like a prior art search conducted. Once the prior art search is complete, I can review the uncovered prior art and provide you with my opinion regarding whether your invention contains novelty and is not obvious.
Foreign Patents
Foreign patents can claim priority directly to a provisional and/or regular U.S. application if the foreign patent application is filed within one year of earliest U.S. filing date claimed. Alternatively, the foreign patent may claim priority to a provisional and/or regular U.S. application via the international PCT application. I have long term established relationships with foregin patent attorneys for handling the foreign patents. The examination of the foreign patents is similar to the U.S. in that the foreign patent examiner will conduct a prior art search and determine whether the claims contain novelty and an inventive step (not obvious). I can respond to the foreign Office Actions through the foreign attorneys in the same manner as in the U.S, as described below. If the foreign patent examiner determines that the claims contain novelty and an inventive step, and notice of allowance is issued, the patent will issue after payment of the issue fee.
There are yearly maintenance fees for both foreign applications and foreign patents that must be paid or the foreign application or foreign patent will go abandoned.
Copies of the prior art uncovered by the foreign patent examiners, office actions and responses should be filed in the corresponding U.S. application to comply with the duty of disclosure.
Utility Patent Application Process
Initial Retainer
Before I am retained as your lawyer, I am required to conduct a conflict check. To properly conduct the conflict check, I will require the inventor(s) names, residences, and citizenship, the name and address of the owner of the invention, and a brief description of the invention.
If there is no conflict, I will send you a retainer letter. If you agree to the terms in the retainer letter, I will need your signature on the retainer letter. Once the retainer letter is signed and you agree to utilize me for your patent needs, I will be retained by you.
I am a paperless office. Thus, the only file will be the official file available on the U.S. Patent Office website PAIR system at www.uspto.gov.
Initial Patent Filing
To prepare a new utility patent application, I will need you to provide me with an invention disclosure. In the invention disclosure I need you to tell me a story. First describe the conventional art (what is being used or sold now) and the problems with the conventional art. Then describe your invention and how your invention solves the problems with the conventional art. Also describe any unexpected or surprising efficiencies, properties or results your invention provides compared to the conventional art. I will need drawings of your invention, which can be hand drawn or computer generated. If your invention includes a method, process, software, or website, also provide a flow chart(s) of the steps.
Once I receive your invention disclosure, I will prepare a complete draft U.S. patent application for your review, including an abstract, claims, drawings and written specification. Once the review process is complete and you confirm the accuracy and completeness of the application, I will file the application as a provisional patent application or regular patent application, along with the required forms.
The regular application will publish about 18 months after the filing date of the regular application or earliest filing date claimed by the regular application.
The inventor(s) own the patent rights. Ownership of the patent rights can be assigned from the inventor(s) to the desired entity, person or company by signing and assignment and then recording the assignment in the U.S. Patent Office.
Examination
Once the regular application has been filed, a U.S. patent examiner will examine the application anywhere from 1-3 years after filing. There are ways to speed up the examination if desired, such as by the payment of an additional fee or filing a petition.
The examiner can restrict the claims to different inventions the examiner determines are distinct from one another. Thus, divisional and/or continuation applications may be filed resulting in more than one patent issuing from the same regular application.
The examiner will conduct a prior art search. In most cases, the examiner will isssue an Office Action and reject the claims over the prior art as lacking novelty or as being obvious. I can respond to the Office Action by any of amending claims, responding to the examiner's arguments, and/or presenting experimental evidence. The examination process can go back-and-forth betweeen the examiner and the inventor many times and over a period of many years. There are also methods to appeal an examiner's adverse decision.
Once the examiner agrees that claims contain novelty and are non-obvious over the prior art, the examiner will issue a Notice of Allowance. The patent will issue after payment of an issue fee. A divisional or continuation application can be filed to pursue additional claimed subject matter not issued in the patent. The divisional or continuation application must be filed while the regular application is pending, i.e. before the application issues a patent or goes abandoned. Multiple patents can issue from one regular patent application.
Once the patent issues, there will be required maintenance fees to keep the patent from expiring. I am not responsible for docketing the due dates for the maintenance fees. The maintenance fees can easily be paid online at www.uspto.gov.
I cannot guarantee that a patent will issue. However, I will describe and claim your invention in the best possible light and aggressively prosecute the application to obtain a patent. I have over 30 years' experience in patent prosecution and I have a high success rate with over 1000 patents issued. Furthermore, pending applications have value.
DESIGN PATENT
A design patent covers the ornamental design for an article of manufacture, i.e. a human-made tangible object. The design must be original, novel, and not obvious.
Design patents should contain at least 7 drawings showing the views up, down, left, right, front, back and perspective, a written specification, and a single claim.
The design patent application can claim priority to a foreign filed design application that was filed no more than 6 month prior to the U.S. design patent application. The design patent application can be used as a priority for foreign design patents that have been filed no more than 6 months after the U.S. design patent filing date.
Once filed, the design patent application is usually examined by an examiner within the first year. The examiner will conduct a prior art search and then consider whether the design is novel and not obvious. The examiner will also consider whether the drawings comply with the formal requirements. The examiner may isssue an Office Action and reject the claim over the prior art as lacking novelty or as being obvious, or reject the drawings for formality issues. I can respond to the Office Action by amending the drawings and/or responding to the examiner's arguments. The examination process can go back-and-forth betweeen the examiner and the inventor many times and over a period of many years. There are also methods to appeal an examiner's adverse decision.
Once the examiner agrees that claim contains novelty and are non-obvious over the prior art, the examiner will issue a Notice of Allowance. The design patent will issue after payment of an issue fee. A divisional or continuation application can be filed to pursue additional subject matter not issued in the design patent. The divisional or continuation application application must be filed while the design patent application is pending, i.e. before the application issues a patent or goes abandoned.
The design patent has a 14 year patent term from the date of issue. No maintenance fees are due.
rEXAMINATIONS, REEISSUES AND Opinions
REQUEST FOR REEXAMINATION
A request for ex-parte reexamination may be filed if there is a substantial new question of patentability of a claim in the patent based on prior art patents and publications. The ex-parte request can be filed by any party, and the party filing the request can remain a secret. The request includes a detailed explanation of how the claim is invalid over the prior art and proposed prior art rejections can be made. If the request is granted, the filing party will have no further part in the examination process.
A request for interpartes reexamination may be filed if there is a substantial new question of patentability of a claim in the patent based on prior art patents and publications. If the request is granted, the filing party will be able actively participate in the examination process.
REQUEST FOR REISSUE
A request for reissue can be filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out of an error in conduct which was made in the preparation and/or prosecution of the application from which the patent issued.
The most common reasons for filing a reissue are:
- the claims are too narrow or too broad;
- the drawings or disclosure of the specification contain inaccuracies;
- the applicant failed to claim or incorrectly claimed foreign priority; and
- the applicant failed to make reference to or incorrectly made reference to prior co-pending U.S. applications.
A broadening reissue must be filed within two years of issuance of the patent to pursue broader claims. The broader claims cannot recapture subject matter given up during prosecution of the application from which the patent issued. Changes to the claims may create intervening rights for potential infringers who infringe the claims between the time of the issuance of the original patent and issuance of the reissue patent.
INFRINGEMENT OPINION
A infringement opinion is a determination as to whether your invention infringes the claims of a non-expired patent, or whether a competitors' product or process infringes the claims of your patent. First, the claims are interpreted in light of the written specification and the prosecution file history (statements made during examination of the patent application from which the patent issued). Extrinsic evidence may be used, such as dictionaries. Once the claims are properly interpreted, a determination is made whether the product or process meets the claim elements. For there to to be infringement of a claim, every element of the claim must be shown in the product or process.
VALIDITY OPINION
A validity opinion is a determination as to whether one or more claims of the patent are valid over one or more prior art references. Usually the prior art reference(s) are newly uncovered by a prior art search and were not considered by the examiner during examination of the application from which the patent issued. The written specification and statements made by the inventor during the examination of the application from which the patent issued are considered to determine the meaning of the claims. Then, the claim elements are compared to the prior art reference(s). If a single prior art reference discloses all of the elements of a claim, that claim is said to lack novely in view of the reference. If a combination of two or more references is requied to show all of the elemnts of the claim, that claim is said to be obivious in view of the combination of references.
Protest and Third-Party Preissuance Submissions
A protest may be filed by a member of the public against a pending regular application if filed before the regular appliation publishes or a notice of allowance is mailed. Types of information for submission in a protest include public use or on sale, inventorship, patentability challenge, and/or “fraud” or “duty of disclosure” information. A concise explanation of the relevance of each item must be included, which allows for arguments against patentability.
A third-party submisssion of prior art patents, published applications, or printed publications may be submitted before the later of 6 months after the date of publication or the date of a first Office action on the merits rejecting any claims, or before the date of a notice of allowance, if earlier. A concise description of the asserted relevance of each document must be submitted. Arguments against patentability and proposed rejections cannot be included.
Post Grant Review
The post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable, which can be based on prior art patents and printed publications, alleging unpatentability based on evidence of public use, on-sale activity, or other public disclosures, or on an alleged lack of compliance with written description, enablement, or patent eligibility requirements. If the proceeding is instituted and not dismissed, a final determination by the U.S. Patent Board of Appeals will be issued within 1 year. As of September 16, 2012 post-grant review became available for covered business method patents irrespective of their priority date. For technologies other than covered business method, post-grant review is only available for patents with a priority date later than March 15, 2013.