Patent Law involves the protection of the ownership interests of inventions. It involves patent prosecution, or the filing and pursuing patent applications through the US Patent and Trademark Office, as well as patent litigation, or the defense of one's intellectual property rights through the court system. David Kreher has patent prosecution and patent litigation experience.
There are three main types of patents applied for through the U.S. Patent and Trademark Office (USPTO). These include the Utility Patent, the Design Patent and the Plant Patent. A fourth patent type is available, which is the Reissue Patent application, but this type of application is used to correct an error in an already issued patent.
Issued for the invention of a new and useful process, machine, manufacture, composition of matter, or a new and useful improvement thereof. It permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the patent application filing date.
Issued for a new, original, and ornamental design embodied in or applied to an article of manufacture. It permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant.
(This office does not file Plant Patents.) Issued for a new and distinct, invented or discovered asexually reproduced plant including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state. It permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing.
A patent allows the inventor to protect his or her idea for a period of 20 years from the date of filing, in exchange for making that idea available to the public. Obtaining a utility patent begins with an idea, be that idea a new invention, an improvement of an invention, or a process for the making of an invention. The inventor must then develop the idea to such an extent that someone familiar with the area of expertise in which the patent was developed would be able to take the information available and reproduce the idea. This does not mean a prototype needs to be developed prior to filing, just that the idea is developed to such an extent that a working prototype could be produced.
If the idea has been developed but research, testing and further development may be required, the inventor may consider filing a provisional application to protect the idea for 1 year while these additional steps are taken. If the idea has been developed to such an extent that it is ready for production, a nonprovisional patent application should be filed. The following steps describe the process followed for the filing of a nonprovisional utility patent application.
This conversation should include issues such as a description of the types of patents available, whether to file a provisional or nonprovisional application, how long the patent application process will take (it could take several years), as well as a discussion of the idea itself. For me as a patent attorney, I need to understand the idea well enough to be able to conduct research into whether the idea has already been patented and be able to write a description of the idea, with the aid of the inventor, so that the idea can be patented. This acquisition of knowledge of the idea may involve the inventor describing the idea, reviewing drawings, looking at prototypes, and even visiting the place where the idea will be produced.
A patentability search reviews the USPTO databases, as well as other, international databases, to determine whether another inventor as already patented the inventor’s idea. During this investigation, not only is the attorney looking for an invention that is identical to the inventor’s idea, but consideration is also given to patented inventions that are similar, accomplish the task the inventor’s idea accomplishes but in a different manner, and inventions that could be obviously combined to produce the inventor’s idea.
A nonprovisional patent application includes several sections including a discussion regarding prior related patents identified during the patentability search, a description of the idea, and a claims section. The claims section specifically lays out what the idea is. The document itself will probably go between the attorney and the inventor several times in order to make sure the idea is properly described. Meanwhile, drawings may need to be developed that aid in the understanding of the idea being patented.
This involves the electronic filing of the written patent application, the drawings, a collection of required documents, and may involve the filing of assignment paperwork, that assigns the patent application from the inventor to another owner such as a business. In the United States, only the inventor can file a patent application, not a business. Ownership of that application or patent can then be assigned to a business.
Once the examiner reviews the patent application, the examiner sends out an office action stating the findings of the examination. In this action, the examiner may issue a notice of allowance, or respond with objections and rejections. Objections are issues the examiner has identified that must be corrected prior to the issuance of the application. Rejections are the examiner’s basis for denying the patent application. The applicant has one opportunity to respond to the stated objections and rejections. The response can make changes to the application, and can argue that the rejections are inappropriate. No new matter may be added to the specification but clarifications can be made. In addition, claims can be added, edited or deleted where necessary.
Once the examiner receives the applicant’s reply, the examiner will evaluate the reply and issue a new office action. Again, the examiner may state that the application is ready for issuance. If the examiner has new objections or rejections, these will need to be replied to. If the examiner does not have new objections or rejections, the examiner will issue a final rejection. At this point the applicant will need to decide some sort of continued examination of the application or an appeal.
If a notice of allowance is issued, the applicant must pay the issue fee and the publication fee.
Once a patent application is issued, maintenance fees are due 3½, 7½ and 11½ years after the patent is granted.