Patents

Patent Prosecution

Patent Basics 101

A Patent, at the most fundamental level, is the legal right to sue another party for impermissibly making use of a Patent holder’s invention. A Patent is therefore a license, which typically lasts for 20 years from the date that the application was filed with the USPTO, and is the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. Not every idea or invention is Patentable. According to US statutory law, any individual who, “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.”

Principally, in order for a patent application to be successful, the patent in question must be novel, nonobvious, adequately described, and claimed in clear and definite terms. After the United States Patent and Trademark Office approves a patent application, the owner of the patent accrues enormously powerful enforcement rights for a substantial number of years, following the filing date of the patent application. The Applicant can: prevent others from making the patent, prevent others from using the patent, prevent others from selling the patent, prevent others from offering the patent itself for sale, and prevent others from importing the patent.

A good Patent Lawyer will draft the patent application in such a way as to include a sufficient amount of detail to articulate the invention and thereby have it admitted while not limiting it too much so that it cannot be used as an enforcement device against infringers. A Patent Application will include patent drawings which explicitly illustrate the details of the invention and in the case of Utility Patents, will include “Patent Claims” which narrowly defines the legal borders of the Patent. Patent Claims are either independent or Dependent and vary and are typically expressed in technical terms.   

A Patent can only be filed a Registered Patent Attorney and should be filed in a timely manner and in accordance with the America Invests Act (“AIA”. ) Please speak with one of our Patent Lawyers to learn about your particular case.

Patent Searches

As we shall soon see below, there are different types of patents, each covering a type of invention. Nevertheless, irrespective of the type of patent you will be filing, it may be prudent to run a conflict search and determine the extent to which (if at all) your patent infringes on the rights of others. The purpose of this search is to check if a similar invention has already been patented and to a certain extent, attempt to discern the legal-plausibility of such an invention. Indeed, upon submitting the patent application, an examining attorney at the United States Patent and Trademark Office (the “USPTO”) will conduct their own search to determine if the invention is already known or otherwise already in the public domain. Specifically, the examiner at the USPTO will be on the lookout for the novelty of the invention and the non-obviousness of the invention. These two concepts are related but slightly different and therefore Applicants often find themselves meeting the novelty criteria (they really did come up with the invention) but not the non-obvious criteria (what they “came up with” is entirely apparent to everyone). This non-obvious criteria is very often the more challenging of the two criteria to satisfy and entails a fair amount of subjectivity on the part of the Patent Examiner. 

The purpose then of a patent search is to help us in determining whether patent protection is prima facie available or unavailable based on previous submissions and the inherent merit of the invention itself. Should we determine after conducting a search that your patent is not sufficiently novel, our patent attorneys can work with you to tweak your invention so as to sufficiently distinguish it from the existing-cited patent application.

A patent search may be conducted on the most rudimentary of levels by using the USPTO database and sifting through relevant inventions. Other patent databases exist that can search patents outside of the United States as well, such as PatentScope and Google Patents. Before initiating the search, it is a good idea to analyze your invention in relation to the current market in your field in order to recognize what is novel about your invention. In other words, figure out what makes your invention new and unique. This way, you will know what to look for as you comb through your search results. If, unfortunately, your invention is not as novel as you previously thought, then you will at least save a great deal of money by not moving forward and filing an application. Alternatively, if you still would like to proceed, you may learn from the search results how to tailor your invention such that it does not infringe on the rights of the existing patents that you discovered.

Utility Patents

Overview of Utility Patents

A utility patent, also known as a patent for invention, is issued to those who create or discover a new and useful product, process, or machine. For these types of patents, the USPTO requires a technical description of the invention or discovery, drawings, a list of claims setting the scope of the patent, and an oath or declaration.  For example, utility patents apply to machines like computers and products like medical equipment. When people talk about ‘Patents”, they mean Utility Patents. Utility patents are the most sought after category of patents and indeed of all of the patents issued by the United States Patent and Trademark Office (USPTO), approximately 90% of them fall into this category. It may take between two and three years to officially receive a utility patent. Utility patents are deemed useful when they are operable and have practical uses and whereas Design Patents protect the shape or appearance of an article, utility patents protect how a given article functions.  Utility patents last for 20 years following the filing date and as issued by the USPTO, is enforceable only within the United States.

In order for an invention to be eligible for a utility patent, it must be a process, machine, article of manufacture, or composition of matter. A process refers to an action or series of actions, examples of which include online systems and assembly line processes. An example of a machine, which must consist of  parts or devices, is a motorcycle. Inventions that become manufactured are articles of manufacture. Finally, a composition of matter is a chemical composition such as a drug or a novel combination of substances. Chemical patents can be particularly challenging vis-a-vis the functionality requirement given the reality that the patentable feature of the invention very often proceeds any real-world functionality.

Remember, ultimately, the USPTO will not approve a patent application unless the invention is novel, useful, and non-obvious. Novel means that the creation is not previously existing. Useful means that it must help people achieve something. Non-obvious means others are unlikely to come up with the design on their own.

Benefits of Utility Patents

Utility patents are often cited as being among the most powerful tools one can possess to protect his/her intellectual property rights. A utility patent grants its owner with the rights to prevent others from producing, using, and selling the patented invention for 20 years following the filing date of the patent application. Notably, it lasts longer than a design patent, which grants its owner with protection for only 14 years.

Because an approved patent means an exclusive right to use an invention, you must decide if this exclusive right is a worthwhile business decision. If your invention is such that patent infringement can easily be identified, then the answer to that question is likely yes. Patent infringement is proven when a plaintiff can show that another party is proposing to sell, selling, using, or making the invention or creation in the United States or importing it into the United States without authority.

Limitations of Utility Patents

Because utility patents provide such robust and comprehensive protection (and take a lot of manpower as they are examined on the level of the USPTO) , they are also costly. A utility patent for a simple invention can require payment of several thousand dollars whereas a utility patent for a highly complex invention can require payment of tens of thousands of dollars. The applicant’s total expenditure depends on several factors including the level of complexity of the application, legal fees, the number of claims the applicant makes, the length of the application, the time required to respond to any potential office actions from the USPTO, and whether or not an appeal is sought.

Patent infringement is not always obvious. For example, if you would have to resort to the laborious and costly undertaking of hiring an expert to discovery precisely how a competitor is making their products, then the right to keep others from producing and selling your invention may not hold much weight in the practical sense. In such instances, a utility patent may not be worth the financial burden. Once a utility patent is approved and issued by the USPTO, the patent owner will be required to pay regularly scheduled maintenance fees.

Filing a Utility Patent Application

If, after your utility patent search has concluded and it appears that your idea is truly novel, then it is time to seriously consider filing a utility patent application with the USPTO. Unlike design patent applications, utility patent applications require a detailed explanation of how the invention operates. The application should read such that an individual in the same field could understand how to use the invention. Applicants are also required to include additional methods to make the invention. In other words, the text in the application should teach the public how to use the invention. Compared to design patent applications, utility patent applications require a much greater amount of detailed text. It is often easier said than done to craft utility patent applications in such a way that leads to approval upon the Examiner’s initial review.

The applicant is required to claim the invention using numbered sentences. The elements of the invention should be found within the claims. For an invention to be novel, the combination of these elements cannot be found elsewhere in a preexisting patent, patent application, or publication. If the Examiner finds an identical combination of elements elsewhere, they will reject the application. For an invention to be non-obvious, no set of published references contain the combination of elements. In other words, the Examiner may refuse the application because it is not non-obvious if all of the elements can be found by combining the elements found in two previously published references. If you ultimately file a utility patent application, remember that you are able to check in with the USPTO as you wait to hear from your Examiner, whether you are waiting for an initial decision or a subsequent correspondence, such as a reply to an office action response.

Design Patents

Overview of Design Patents

Design patents are issued for new and ornamental designs related to an article of manufacture; unlike a Utility Patent, a Design Patent says nothing about the function of the product but instead only considers the product’s ornamental design features. Design patents may relate to the shape or specific layout of an article, surface ornamentation applied to an article, or a combination of both and must be made for an article and have the capability to be reproduced. The phrase “ornamental design” refers to the product’s shape or visual ornamentation. The ornamental design does not have to cover the entire product in order for a design patent to be issued.

Applicants may file separate applications for a utility patent and a design patent for the same invention, but the protections granted may be difficult to distinguish from each other in reality.

These patents are less costly to obtain than utility patents and are also easier to obtain from the USPTO. However, they are applied for less often than utility patents are. Design patents last for 15 years following the filing date. An applicant for this type of patent must provide drawings depicting different views of the design accompanied by descriptions for each drawing. There are no maintenance fees required for design patents. Design Patents tend to be reviewed by Examiners on a faster timeline, meaning design patent applicants can expect to receive decisions quicker than utility patent applicants. 

Design Patent Requirements

A design patent needs to be novel, meaning that the design is not previously existing. It also needs to be original, meaning that it does not copy any pre-existing designs. It must be nonobvious, meaning others are unlikely to come up with the design on their own. The final requirement is that the design must be ornamental in the sense that its primary aspects are not related to its functionality. It is recommended that potential applicants conduct a Design Patent Search before filing to verify that their invention is truly original.

What are the Components of a Design Patent

A design patent application must clearly disclose what article the patent relates to. Furthermore, the applicant must reveal how this article is used. The USPTO lays out specific and suggestions requirements for the formatting of the application. The title is important because it reveals the subject and possible use of the article. It may be in all capital letters and boldface type, centered on top of the page with no underlining. The body of the application should follow a heading that reads “SPECIFICATION” in all capital letters without italicization or boldface type. The USPTO does not require any other headings, but the applicant may include other headings such as “RELATED APPLICATION DATA” and “CLAIM AND DESCRIPTION”. The title must name the article related to the design. The name of the design itself may be part of the title. If it is included, this name should be readily understood by the public. Abbreviations and trademarks are not permitted in titles. Titles are required to be in singular form. An example of a proper titles is the name of the design followed by “FOR” followed by the name of the article with widely known use.

Applications may also include preambles. The preamble should be in the form of one paragraph preceding the paragraphs detailing the views of the drawing. The applicant’s name, the design title, and a summary of the article with its intended use should all be in the preamble. Unlike the preamble, a specification section is required before the description of the drawings. This portion should be named the “DESCRIPTION” section on the final version of the application. It needs to include information about any existing copyrights and any applicable disclaimers. 

The drawing descriptions should be divided into paragraphs. However, there are not specific directions for the formatting of these paragraphs. If the applicant believes that additional explanations would be helpful for the Examiner, they may provide them following the drawing description paragraphs. Such statements may describe modifications of the design not depicted in the drawings or modifications extending beyond the scope of the drawings. Such statements may also pertain to the drawings not depicted in solid. Design patent applications may not be amended to include statements of this type after filing because they are categorized as new matter. Required statements include an explanation of the reason for the broken lines and a description of the article’s nature and use. However, the latter is not necessary in this section if it is provided elsewhere in the application. The applicant may wish to include a characteristic feature statement that describes which feature of the design makes it nonobvious or novel when compared to prior art. Disclaimer statements are also optional, but may be useful for the Examiner. The applicant must include a claim immediately after the description section. An example of such a claim is, “The ornamental design for (application title) as shown and described.”. 

Drawings for Design Patents

Including a drawing of the claimed design in a design patent application is essential. All of the drawings provided must have been described in the preceding drawing descriptions. The drawing may be in the form of one or more photographs, but the applicant cannot provide the drawings in both forms and must instead choose one. The drawings must be numbered. At least one prospective view of the claimed design needs to be included in this section. Any perspective views that are the same as another view may be omitted, but they must be disclaimed or described. Undisclosed views that are not visible during use of the design do not have to be drawn, but they must also be disclaimed or described. 

The use of lines, both solid and broken, must be intentional when an applicant crafts their drawings. Solid lines represent claimed features of the design. Broken lines represent unclaimed features of the design. In other words, broken lines reference what the remainder of the article may look like. In infringement claims, only the respective solid lines in each design are compared. Broken lines in drawings should be represented using dashes, which can range in length and shading. Dots may also be used. An applicant must explain what all broken lines signify in either the drawing view descriptions or statements following the drawing view descriptions. Applicants must ensure that all their drawings are properly shaded, using both color and contour.

What is the Timeline for a Design Patent?

Unlike the utility patent application process, during which applications are published 18 months following the filing date, the USPTO does not publish pending design patent applications. As a result, competitors may be in the dark about what an applicant is protecting until the application is approved and the product is on the relevant market.

If an applicant chooses to consult with an attorney during the process, the attorney will likely want to have an initial conversation to learn more about the invention. Subsequently, the attorney may request documentation helpful in compiling the application including drawings from every perspective view. If the attorney decides to move forward with representing the applicant in the process, they will prepare the application. The application will likely be forwarded by the attorney to the applicant before submission to the USPTO for the applicant’s review and ultimate approval. 

What are the Benefits of Filing a Design Patent?

Do not be mistaken in thinking that design patents are not advantageous merely because they are not the most common category of patents. One benefit of this kind of patent is time efficiency. Design patents are issued an average of 15 months following the filing date, whereas utility patents are issued an average of 35 months after the filing date. Design patents can be even more time efficient if needed. In a procedure known as the “Rocket Docket”, an applicant may pay an additional government filing fee to receive issuance within six months from the filing date, provided they follow all of the application guidelines and their design is patentable. Also, applicants can mark their product with the term “PATENT PENDING” after filing the  application to be afforded a certain level of protection immediately after filing. This form of protection is achieved rather quickly because design patent applications take a shorter amount of time to file than utility patent applications do.

Design patents are also less expensive to file than utility patents. A small entity must pay $480 to file a design patent, whereas a small entity must pay at least $785 to file a design patent. Issuance costs $350 for a design patent and $500 for a utility patent. A design patent is not subject to maintenance fees, whereas a utility patent is subject to $6,300 in maintenance fees over the course of its lifespan.  For these reasons, individuals sometimes choose to file design patent applications when they would like a utility patent, but cannot afford the filing cost and subsequent fees. In infringement cases, design patents are less costly and typically less difficult to enforce than utility patents. Courts use the “ordinary observer” test, which asks if someone who gives as much attention to two products as a typical purchase would ultimately decide they are substantially the same. Expert testimony is not necessary to assist judges in deciding these cases. These factors, coupled with the strong protection given by design patents, often lead to relatively quick settlements.

Who Can File a Design Patent?

Anyone can file a design patent application regardless of whether they live in the United States or outside of it. If the design in question was created by a team effort, only the person who had the original idea of the design should be listed as the inventor unless someone else substantially changed the design.

Applicants can file a group of design patent applications with each one protecting a different region, component, or segment of the same article. This way, an infringer who copies any feature of the article is still guilty of patent infringement. Such applicants should be filed together so that the Examiner does not conclude that any application should be denied based on prior art.

Plant Patents

What is a Plant Patent?

A plant patent is issued to those who invent or discover new and distinct asexually reproducing plants, excluding tuber propagated plants and plants in uncultivated states. Asexual reproduction includes rooting cuttings, layering, grafting, and budding. Plant patent owners are able to prevent others from asexually reproducing the plant, selling the plant, offering the plant for sale, using the plant, and importing the plant. Plants with the ability to sexually reproduce may be patentable if they were first invented or discovered via asexual reproduction. Seedlings discovered in a cultivated state,  mutants, and hybrids qualify Plants found in an uncultivated state and tuber-propagated plants do not. Patents will not be issued for tuber-propagated plants because the part of the plant sold as produce is also the part that is reproduced. The USPTO has set forth specific and rigorously enforced requirements for plants in order to render them eligible for patent protection. For example, the applicant must be the person or persons who invented the plant and the plant must differ from other similar plants by at least one characteristic. 

Exclusive rights granted to these patent owners last for 20 years and No maintenance fees are required. Applications must provide the Latin name of the genus and species of the plant, information about the invention, a drawing with a description, a botanical description, a single claim, and an abstract. Finally, like utility patents, the United States Patent and Trademark Office (USPTO) will only grant plant patents if the invention is novel, non-obvious, and useful.

How Do I Protect a Plant Patent?

Applicants for plant patents are required to provide a transmittal form, a fee transmittal form, application data sheet, specification, drawings, and the applicant’s oath or declaration. The specification is a critical component of the application. The USPTO requires several important pieces of information to be in this section. In it, the applicant must include the claim, which  identifies the plant and its specific features. The plant’s title, cross-references, the Latin name of the plant’s species and genus, information about federal research, the plant’s background, a summary, a drawing description, a botanical description, and an abstract of the disclosure must be present as well. The claim needs to center around the plant or tree at issue rather than just the fruit or flower that is a part of the plant. The same goes for the title the applicant chooses to give the plant. If the Examiner is not satisfied with the description of the plant in the original application, they may ask for additional information or amendments in an office action. The Examiner may also request that the applicant send in a specimen of the plant or part of the plant for review. If the Examiner wishes to see the plant at a specific stage in its growth and the plant cannot be removed from its environment, then the applicant will be required to make inspection of the plant available in the environment.

Provisional Patent Applications

Because of the length, expenses, and general complexity involved in pursuing a utility patent, filing utility patents may not always be the most prudent decision to take. In these situations, filing a Provisional Patent Application may be a better option. A provisional patent application is less expensive than a formal utility patent application and provides the Applicant a full year to decide if they wish to pursue a full utility patent application while still being afforded a certain level of protection from the USPTO. This option is beneficial for many applicants, especially those initially unfamiliar with the USPTO and its requirements for obtaining a patent. Should the applicant decide that they do indeed want to pursue a full utility patent, then they will be able to use the filing date of the non-provisional patent application as they move forward. In order to improve the likelihood of success of the non-provisional patent being issued (in its emergent form of the Utility Patent), the applicant must add the necessary components for the utility patent application (in the likely event that these components were not already present). If the applicant decides against proceeding with the Utility Patent, then the provisional application becomes abandoned at no additional costs to the applicant. It is therefore quite easy to see why the Provisional Patent is such an attractive option.

A provisional patent application provides applicants with an opportunity to file without having to meet all of the formal requirements for a utility or plant patent application. Provisional patent applications are not available for design patents. If a provisional patent application is successful, then the applicant may subsequently use the filing date in a non-provisional application, provided that the application is filed within one year of the date in question. The one year time limit cannot be extended.

Filing a provisional patent application is chiefly beneficial to those Applicants those whose designs are still developing. 

A provisional application provides the applicant with a “placeholder:, initial filing date and permits inventors to write “patent pending” in relation to the invention so that they are afforded a certain level of protection. A provisional patent application is not subject to formal examination and will expire one year after filing. Still, these applications can still be rejected. Applicants must provide a written description of the invention and applicable drawings at the time of filing.

PCT Patent Applications

How Can I File an International Patent Application?

A Patent Cooperation Treaty (PTC) application grants international patent-pending status to an applicant. A proper application requires only one utility patent filing. The purpose of a PTC application is not to automatically receive foreign patent rights; rather, it allows applicants to initiate international patent coverage without having to pay all the costs of filing in multiple Countries immediately. In this way, filing a PTC application provides applicants with an opportunity to keep their options open when it comes to filing foreign patent applications as it postpones the deadline for filing in different countries. An applicant who wishes to file a PTC application should do so with a Receiving Office, such as the United States Patent and Trademark Office (USPTO), and identify which countries it would like to seek coverage under. The countries must be member PTC countries, which include 156 nations. However, it is important to remember that filing a PTC application does not automatically translate to approved patents in all of the applicant’s chosen countries. Filing a PTC application is similar to filing a provisional application in that it gets the process started and allows the applicant to have options. If an applicant files a utility application with the USPTO with hopes of ultimately being patented in other countries but chooses not to file a PTC application, then the applicant will have to file applications in each country of interest within one year after the filing date with the USPTO in order to claim priority on that early date. Such a process can be time consuming and expensive.

How Long does it Take to File an International Patent Application?

Under the PCT, the national phase deadline in a foreign nation is 30 months, or 31 months for certain countries, following the priority date, or the filing date of the initial application. Without a PTC application, the deadline is 12 months. Therefore, the simple act of filing a PCT application gives an applicant an additional 18 or 19 months to earn more money towards their invention or determine whether they want to continue pursuing patents at all. As a result, filing a PTC application can end up saving applicants up to tens of thousands of dollars. When the 30 or 31 months have elapsed, an applicant must file a national state application in each foreign country of interest. The cost of each application depends upon the individual nation and whether translation is required.

File an International Patent Application: Quick Tips

Not every nation is a member of the PCT, although most developed nations are. For example, Taiwan is not a member. For these countries, the foreign filing deadline is one year following the priority date. Generally speaking, PTC applications are beneficial for applicants. However, there may be some instances in which an applicant decides that filing a PTC application is not a worthwhile pursuit. For example, an applicant who only wants to obtain a foreign patent from non-PTC member countries such as Taiwan likely would not utilize this option. Also, an applicant who already filed a patent application in a member country, but is only looking to obtain patents from several or fewer foreign countries, may wish to file direct applications in those foreign countries as the one year mark following their filing date approaches. Finally, because cost is always a consideration, it is important to note that a PTC application costs between $3,500 and $4,500

Patent Examination Office Actions

After a patent application is received by the USPTO, it undergoes pre-examination, in which the office will verify that the appropriate applicable fee has been paid and the application requirements met. Then, the USPTO will assign the application to a Patent Examiner whose background and experience aligns with the proposed invention or creation. The Patent Examiner will carry out a thorough examination to decide if the proposed patent is useful, novel, non-obvious, and claimed in clear and definite terms. The Patent Examiner will rely on previously issued patents as well as printed sources, public disclosures, and other patent applications during their search.

Most patent applications are not initially accepted by the USPTO given its strict requirements. Should this occur and an Office Action has issued, the applicant should not yet despair. After receiving the Patent Examiner’s report, applicants may file a response refuting the Examiner’s reasoning and/or providing amendments to the original application.

If the rejection is based on obviousness or novelty, the applicant may amend the application and the Examiner will review the new version with the amendments. For example, if the Examiner has referenced two existing patents and neither includes a specific part or step that your patent does include, you may amend the application to add the part or step even though you chose not to originally. Of course, the danger in amending your patent application utilizing this method is that competitors may have an easier means to imitate your idea without going so far as to infringe on your patent at a future date.

Thus, filing a utility patent application requires strategy, which is one major reason why many applicants seek counsel from a patent attorney. Alternatively, you may file an appeal through the Patent Trial and Appeal Board. An example of an argument found in appeal is one that claims an invention is non-obvious contrary to the Examiner’s belief that one may readily think to combine two existing utility patents. This method can be costly and lengthy, but having a utility patent is invaluable, and therefore many people find the appeal process a worthwhile one to pursue. The disadvantages of embarking on the appeal process make for another reason many applicants work with a patent attorney. Because attorneys in this field tend to have years of experience, they are more likely than the average applicant to understand the language USPTO Examiners are looking for in utility patent applications, meaning the entire appeal process may be avoided altogether with the help of legal professionals.

This process may continue until, ultimately, the Examiner issues a notice of allowance or an official rejection. In the instance of the latter, the applicant may appeal.