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Patents, Inventions, Applications, Intellectual Property and the U.S. Patent Office
Patents, Inventions, Applications, Intellectual Property and the U.S. Patent Office
A patent is an intellectual property right granted by the U.S. Government which excludes others from making, using or selling the invention for a specified period in exchange for public disclosure. Inventors interested in applying for a patent should refer to the United States Patent Office website (www.uspto.gov) and familiarize themselves with the available resources.
There are three types of patents including utility patents, design patents and plant patents. Utility patents may be granted to anyone who “invents or discovers any new and useful process, machine, article of manufacture or composition of matter or any new and useful improvement thereof.” Design patents may be granted to anyone who invents or discovers a new and ornamental design. Plant patents may be granted to anyone who creates or discovers and asexually reproduces any new variety of plant.
Utility applications for patent are either provisional or non-provisional. A provisional application allows filing without a formal patent claim, oath, declaration or any informational disclosure. Its purpose is to establish an early effective filing date in a later filed non-provisional patent. An applicant who files a provisional application must file a corresponding non-provisional application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.
A non-provisional patent application has all the requisite elements associated with a utility patent including background, abstract, specification, drawings, claims etc. See the following link for more details: http://www.uspto.gov/patents/resources/types/utility.jsp
A basic filing fee of $380 is assessed for filing a utility application ($190 for small entity or $95 for electronic filing). Additional fees are assessed based on number and dependency of claims.
Fee listings can be viewed at: www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm#patapp.
For applications filed on or after June 8, 1995, patents are granted for a term which begins with the date of the grant and usually ends twenty years from the application date. All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant.
An inventor or their legal representative should always conduct a “search” of relevant “prior art” or technology before filing for a patent. This will help ensure that your invention is unique and has not been done before. Prior art constitutes any public information that is relevant to a patent’s claim to originality. Two excellent and free sources to search are the U.S Patent office (www.uspto.gov) and Google Patents (www.google.com/patents).
When conducting a search it is important to use various relevant keywords and phrases. Search results can vary widely depending upon terminology. Someone looking for electronic thermometers for example may use the following terms: electronic thermometers, temperature devices, temperature measuring device, thermal measuring, thermal measuring and testing, heat indicators, heat measuring, electronic temperature measuring, electronic thermal devices, thermometers and so on.
Searching can be tedious, but the more thorough the search the more information can be uncovered and the more accurate and complete picture of prior art can be acquired. This can save a lot of time and money later on. An applicant may also call the patent office and speak directly to an examiner in the area of relevant technology.
If an inventor decides to proceed with the patent application process, it is highly recommended that he or she acquire the services of an attorney or patent agent. Most novice inventors do not possess the legal knowledge and skills necessary to effectively prosecute a patent application. A list of attorneys and agents can be found at the U.S Patent Office website.
After an application has been filed it generally takes between one and three years for a first action. (Complicated applications stuffed with tedious specs and oversized claims may take longer to be acted on. Busy examiners trying to make their quotas may push off overly burdensome applications as long as they can. Nobody wants to reach for that massive file at the end of the month!)
After an examiner assesses the application and conducts a search, a response or “first action” will be sent to the applicant either issuing a patent or rejecting it. Most first actions are rejections.
If the first action is a rejection, the attorney or agent will then reassess the application based on the examiner’s remarks. The usual period for reply to an office action is three months. The scope of the claims or what the inventor is actually claiming as their invention is usually at issue here. Many claims are initially written very broad to include as much as they can for the particular invention. The examiner will then advise the attorney to narrow the claims to something deemed appropriate and within the scope of the invention.
Patent examining generally boils down to three U.S. statutes including U.S.C. 102, U.S.C. 103 and U.S.C 112. (See http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf for a detailed review of relevant statutes.)
If an examiner rejects the application based on a 102 that means a piece of prior art or patent has been found which is exactly or almost exactly what the inventor is claiming as his invention. These rejections are very difficult to overcome since the prior art basically states that this invention has been done before.
Statute 103 may be used to reject an application based on “obviousness.” “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
Obviousness is one of the more difficult legal concepts for the novice inventor to understand. The examiner may combine two or more technologically different pieces of prior art stating that it would be obvious to one having ordinary skill in the art to take X and combine it with Y to get Z. Most inventors will argue that the prior art isn’t the same thing as the claimed invention. These rejections are highly subjective and the final say will be the examiner’s.
U.S.C. 112 primarily involves mechanical problems with the application including poor grammar, unclear language, improperly written claims etc.
The rejected application with the examiner’s arguments and explanations goes back to the attorney and he will attempt to resolve them. The attorney will fix any mechanical problems per 112 and focus on the meat of the rejection from 102 or 103.
A 102 rejection may necessitate the attorney to recommend the “abandonment” of the application due to the clear nature of the prior art. This means no further action on the attorney’s part and the application will go abandoned.
The toughest legal challenges usually lie with 103 rejections. The attorney may feel the obviousness arguments do not hold water and attempt to argue why the examiner is wrong. The attorney may also decide to partially or completely agree to the examiner’s arguments. The battle here is largely over the scope and breadth of the claims.
In responding to a rejection, the attorney must clearly point out why he believes the amended claims are patentable in view of the examiner’s objections and disclosed prior art. The examiner will reconsider the amended application and either allow the claims and issue the patent or reject them. The second office action is usually made “final”.
After final rejection, the applicant may “appeal” to the Board of Patent Appeals and Interferences or allow the application to go abandoned. If the decision of the Board of Patent Appeals is averse to the applicant, an appeal can be filed with the U.S. Court of Appeals for the Federal Circuit. The appeal process can be quite expensive and time consuming. An appeal should only be undertaken, if the inventor feels he has a particularly strong case.