Utility Patent Practice

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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. 

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. 

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. 

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.   

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 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.   

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.  

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:

1. the claims are too narrow or too broad;
2. the drawings or disclosure of the specification contain inaccuracies;
3. the applicant failed to claim or incorrectly claimed foreign priority; and
4. 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. 

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.  

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.  

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.  

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.